Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number:
Filing date:
Proceeding
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
77199918
Applicant
Chicago Mercantile Exchange Inc.
Applied for Mark
CHI
Correspondence
Address
TATYANA V GILLES
NORVELL IP LLC
1776 ASH STREET
NORTHFIELD, IL 60093
UNITED STATES
officeactions@norvellip.com
Appeal Brief
Submission
Attachments
Filer's Name
131001 CHI Appeal brief- final.pdf(76015 bytes )
Exhibits A, C-F.pdf(2776086 bytes )
Tatyana V. Gilles
Filer's e-mail
officeactions@norvellip.com, tgilles@norvellip.com
Signature
/Tatyana V. Gilles/
Date
10/01/2013
ESTTA562532
10/01/2013
TRADEMARK
Case No. 13439-364
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In re Application of:
CHICAGO MERCANTILE EXCHANGE INC.
Examining Attorney:
Serial No.:
77/199,918
Linda A. Powell
Filed:
June 7, 2007
Mark:
CHI
Law Office 106
APPLICANT’S APPEAL BRIEF IN SUPPORT OF REGISTRATION
FOR THE MARK CHI IN INTERNATIONAL CLASS 36
Respectfully submitted,
CHICAGO MERCANTILE
EXCHANGE INC.
Dated: October 1, 2013
By:
/Tatyana V. Gilles/__
Joseph T. Kucala, Jr.
Tatyana V. Gilles
Norvell IP llc
1776 Ash Street
Northfield, IL 60093
Tel: 888.315.0732
Fax: 312.268.5063
officeactions@norvellip.com
ATTORNEYS FOR APPLICANT
From: Powell, Linda
Sent: 11/18/2013 7:29:11 PM
To: TTAB EFiling
CC:
Subject: U.S. TRADEMARK APPLICATION NO. 77199918 - CHI - 13271-364 - EXAMINER BRIEF
*************************************************
Attachment Information:
Count: 1
Files: 77199918.doc
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number:
Filing date:
ESTTA620489
08/08/2014
Proceeding
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
77199918
Applicant
Chicago Mercantile Exchange Inc.
Applied for Mark
CHI
Correspondence
Address
Submission
TATYANA V GILLES
NORVELL IP LLC
1776 ASH STREET
NORTHFIELD, IL 60093
UNITED STATES
officeactions@norvellip.com, tgiles@norvellip.com, jkucala@norvellip.com
Reply Brief
Attachments
140808 REPLY BRIEF w EXHIBIT A.pdf(338076 bytes )
Filer's Name
J. Ryan Hinshaw
Filer's e-mail
officeactions@norvellip.com, rhinshaw@norvellip.com
Signature
/J. Ryan Hinshaw/
Date
08/08/2014
From: Powell, Linda
Sent: 10/6/2014 11:29:44 AM
To: TTAB EFiling
CC:
Subject: U.S. TRADEMARK APPLICATION NO. 77199918 - CHI - 13271-364 - EXAMINER BRIEF
*************************************************
Attachment Information:
Count: 7
Files: CHI consumers1.jpg, CHI consumers2.jpg, Bet on the Weather.jpg, CHI consumers4.jpg, CHI
member def.jpg, Member Firm AH.jpg, 77199918.doc
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number:
Filing date:
ESTTA635292
10/27/2014
Proceeding
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
77199918
Applicant
Chicago Mercantile Exchange Inc.
Applied for Mark
CHI
Correspondence
Address
Submission
TATYANA V GILLES
NORVELL IP LLC
1776 ASH STREET
NORTHFIELD, IL 60093
UNITED STATES
officeactions@norvellip.com, tgiles@norvellip.com, jkucala@norvellip.com
Applicant's Reply Supplemental Brief
Attachments
141027 CHI Sup Reply brief final.pdf(5598259 bytes )
Filer's Name
Tatyana V. Gilles
Filer's e-mail
officeactions@norvellip.com, tgilles@norvellip.com, jkucala@norvellip.com
Signature
/Tatyana V. Gilles/
Date
10/27/2014
TRADEMARK
Case No. 13439-364
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In re Application of:
CHICAGO MERCANTILE EXCHANGE INC.
Examining Attorney:
Serial No.:
77/199,918
Linda A. Powell
Filed:
June 7, 2007
Mark:
CHI
Law Office 106
APPLICANT’S SUPPLEMENTAL REPLY BRIEF IN SUPPORT OF REGISTRATION
FOR THE MARK CHI IN INTERNATIONAL CLASS 36
Respectfully submitted,
CHICAGO MERCANTILE
EXCHANGE INC.
Dated: October 27, 2014
By:
/Tatyana V. Gilles/__
Joseph T. Kucala, Jr.
Tatyana V. Gilles
Norvell IP llc
P.O. Box 2461
Chicago, IL 60690
Tel: 888.315.0732
Fax: 312.268.5063
officeactions@norvellip.com
ATTORNEYS FOR APPLICANT
Table of Contents
INTRODUCTION..................................................................................................................... 2
I. ARGUMENT ............................................................................................................... 2
A.
Applicant’s Consumers Include Members of CME Exchanges andVarious Other
Market Participants. .......................................................................................................... 2
B.
Substitute Specimens Are Available to all Consumers of Applicant’s Investment
Services. ........................................................................................................................... 4
C.
The Use of CHI Mark Is Not Buried in Substitute Specimens. ................................ 6
D.
The Fact that Particular Evidence Selected by the Examining Attorney References
Applicant’s Investment Services only by their Descriptive Name is Irrelevant. ................. 6
II. CONCLUSION ............................................................................................................ 7
1
TRADEMARK
Case No. 13439-364
INTRODUCTION
Applicant, Chicago Mercantile Exchange Inc., (“Applicant” or “CME”) by its attorneys,
hereby submits this supplemental reply brief in further support of its application to register mark
CHI (the “Mark” or “CHI Mark”) in connection with “investment services, namely, providing
futures, options contracts related to hurricanes for trading on an exchange” in International
Class 36 (“Investment Services”). The remaining issue in this appeal is whether Applicant’s
specimens of record sufficiently show CHI Mark functioning as a service mark to identify and
distinguish Applicant’s Investment Services from those of others and to indicate the source of
those services.
Applicant respectfully submits that they do and the Examining Attorney’s
arguments to the contrary are in error.
Applicant will not repeat the detailed prosecution history for this Application. Instead, the
record is clear that:
1. Applicant properly submitted Substitute Specimens on December 9, 2013 (with
supporting information on August 8, 2014) and with the required affidavit and the
Examining Attorney does not object to the submission of the Substitute Specimens.
2. The Substitute Specimens included various chapters from CME Rulebook –
Applicant’s Rulebook - which provides a common regulatory framework for market
users – Applicant’s customers - and show Applicant’s Mark as used in rendering
Applicant’s Investment Services.
In sum, the Board should accept the specimens of record and reverse the refusal to
register because the Examining Attorney’s arguments and characterizations are unsupported
and contrary to the record.
I.
ARGUMENT
A. Applicant’s Consumers Include Members of CME Exchanges and Various
Other Market Participants.
It should be obvious to the Board that Substitute Specimens consisting of CME
Rulebook show direct association between the offer of Applicant’s Investment Services and
Applicant’s Mark and, therefore, are acceptable specimens showing the use of Applicant’s Mark.
2
TRADEMARK
Case No. 13439-364
However, to support her position, the Examining Attorney attacks Substitute Specimens on the
ground that they are not available to Applicant’s “primary or end consumers.”
Applicant’s
consumers encompass a diverse range of individuals, as established by Applicant’s evidence
and evidence offered by the Examining Attorney. See Exhibits 1 (submitted by Applicant on
Feb. 7, 2012) and Exhibit 2 (submitted by the Examining Attorney on October 6, 2014. These
consumers include “Insurance and reinsurance companies, Hedge funds, Energy companies,
Pension funds, State governments, Utility companies,” local distribution companies, construction
companies, manufacturers, agriculture companies, retailers, transportation companies, oil
refinery consumers, ski resorts, and golf courses. See Exhibits 1 & 2. The Examining Attorney
characterizes the above consumers of Applicant’s Investment Services as ”persons and entities
with hurricane exposure.” Ex. Supp. Brief. p.6.
Without citing any specific statement in the record, the Examining Attorney claims that
Applicant “asserted that the Members of the Chicago Mercantile Exchange are the consumers
for the services, and that Members use the CME (Chicago Mercantile Exchange) Rulebook that
were provided as the substitute specimens.” Id. at 4. The Examining Attorney further states that
nothing in the record provides a nexus between ”persons and entities with hurricane exposure”
to whom CME advertising materials are targeted and the CME Members who use the CME
Rulebook. Id. at 6. In the Examining Attorneys’ opinion, CME Exchange Members are brokers
and not the primary or end consumer of Applicant. Id. The Examining Attorney then concludes
that because Applicant’s Substitute Specimens are used only by CME Exchange Members and
not by Applicant’s primary or end consumers Substitute Specimens are not acceptable
specimens to show the use of the CHI Mark in connection with Investment Services. Id.
First, Applicant did not make this claimed assertion. Instead, the record shows that
Applicant asserted the primary customers of Applicant’s Investments Services are various
market participants such as insurance and reinsurance companies, hedge funds, energy
3
TRADEMARK
Case No. 13439-364
companies, pension funds, state governments, utility companies, local distribution companies,
construction companies, manufacturers, agriculture companies, retailers, transportation
companies, oil refinery consumers, ski resorts, and golf courses. All of these customers use the
Substitute Specimen. Therefore, the Examining Attorney’s statements to the contrary are
unsupported and wrong. To further illustrate this point, Applicant points to its December 9, 2013,
Request for Reconsideration (partially reproduced below), which contains language that directly
contradicts the arguments espoused by the Examining Attorney:

“The Rulebook provides detailed information regarding each of the different financial products
traded through Applicant’s exchange, such as the CHI futures and options contracts.
Individual looking to trade any to the Applicant’s products will likely consult the Rulebook.”
Applicant’s Request for Reconsideration, Dec. 9, 2013, p. 2.

“The Substitute Specimens are select portions from Applicant’s Rulebook and specifically
govern the trading of hurricane futures and options under the CHI trademark. The information
in this Rulebook is a critical component regarding the trading of these contracts. For
example, the Rulebook provides information to Applicant’s customers, such as traders and
institutions, regarding the terms of the specific CHI futures and options contract, settlement
positions, etc.” Id. at 3.

“Specifically, Exhibit 1 consists of select excerpts from the “CME Rulebook,” which provide a
common regulatory framework for Applicant’s customers and more importantly directly
associate Applicant’s CHI Mark with Applicant’s Investment Services.” Id. at 5.

“For example, a customer looking to trade a CHI futures or options contract must know the
trading unit, minimum price fluctuation and other regulations and would likely consult the
Substitute Specimens to identify this information.” Id. at 6.
Accordingly, Applicant’s Substitute Specimens are available to and used by Applicant’s
primary and end customers that include both ”persons and entities with hurricane exposure”
looking to invest into Applicant’s CHI Futures and CHI Options and CME Exchange Members.
Therefore, Substitute Specimens are acceptable specimens showing the use of Applicant’s
Mark in connection with Investment Services.
B. Substitute Specimens Are Available to all Consumers of Applicant’s
Investment Services.
In a further attempt to save the refusal to register, the Examining Attorney, for the first
time in her most recent brief analyzes a disclaimer from the February 7, 2012 specimen. The
4
TRADEMARK
Case No. 13439-364
Examining Attorney concludes that because the disclaimer includes a warning that “futures
trading is not suitable for all investors,” Applicant recognizes that not all consumers for ifs
futures and options contracts are sophisticated financial product consumers. See Ex. Supp.
Brief. p.4. The Examining Attorney further notes that the above warning to the consumers is
accompanied by a reference to the CME Group rules without specifying where those rules,
referring to CME Rulebook, can be found. Id. However, the Examining Attorney notes in the
same paragraph that the “warning to consumers is followed by …. a statement that further
information about CME Group and its products can be found at www.cmegroup.com.” Id.
First, the U.S. Commodity Futures Trading Commission requires use of certain
disclaimers regarding futures trading. 17 CFR 4.41. Second, this is a general statement
regarding all futures trading and is not specific to Investment Services at issue in this
Application. The record establishes, and the Examining Attorney admits in her October 6th brief,
that sophisticated parties are customers for these Investment Services. These sophisticated
customers likely understand the rules and limits associated with Applicant’s financial products
and are likely to conduct research and carefully evaluate the risk, trading unit, price increments,
and settlement procedures prior to purchasing CHI futures or options contracts.
Applicant
provides various resources, including its Rulebook, at its website to assist Applicant’s customers
in making purchasing decisions.
Applicant’s Substitute Specimens from its Rulebook are
available at consumers to Applicant’s website at www.cmegroup.com, the very site identified in
the disclaimer of the brochure contained in February 7, 2012. Applicant’s Rulebook also has a
built-in search engine so Applicant’s consumers can easily search the Rulebook for rules
applicable to CHI futures or CHI options.
The Examining Attorney further states that none of Applicant’s “materials purport to offer
the CME Rulebook as additional marketing information or as a user reference for making a
purchasing decision or for managing futures and options contracts.” First, Applicant notes that
5
TRADEMARK
Case No. 13439-364
its CME Rulebook is not marketing information but rather material provided in the course of
rendering Applicant’s Investment Services. As already explained above, most of Applicant’s
consumers are sophisticated market participants who are aware that detailed information
regarding each financial product offered by Applicant is provided in Applicant’s Rulebook. If a
customer wanted to understand the calculation for these specific Investment Services (to
calculate the hedging against a hurricane loss), the customer will consult the CME Rulebook.
Accordingly, Applicant does not need to advertise its Rulebook as a user reference for
Applicant’s consumers who will know to consult CME Rulebook before investing in Applicant’s
financial products.
C. The Use of CHI Mark Is Not Buried in Substitute Specimens.
As already stated above, Applicant’s Substitute Specimens are available on its website
www.cmegroup.com in electronic format with built-in search engine. Therefore, it is easy for
Applicant’s consumers to locate the information within Rulebook on Applicant’s CHI futures and
CHI options. In addition, Applicant’s Investment Services provided under the CHI Mark are part
of the general hurricane futures and options contracts traded at Applicant’s exchange. This is
why the relevant chapters in Applicant’s Rule book include the broader terms “CME Hurricane
Index Futures” in their names. The Examining Attorney’s characterization that use of the CHI
Mark is buried in the Substitute Specimens is inaccurate and irrelevant.
The Substitute
Specimens show use of the CHI Mark in connection with Investment Services and the
Substitute Specimens are used in connection with the rendering of such services.
D. The Fact that Particular Evidence Selected by the Examining Attorney
References Applicant’s Investment Services only by their Descriptive Name
is Irrelevant.
Finally, the Examining Attorney attempts to argue that Applicant is not entitled to a
registration for the CHI Mark because the print-outs from Applicant’s website which the
Examining Attorney attached to her Supplemental Brief use descriptive names to refer to the
6
TRADEMARK
Case No. 13439-364
specific Investment Services. Such an assertion is irrelevant. Applicant submitted acceptable
specimens that show use of the CHI Mark in connection with the Investments Services, namely
as CHI futures or CHI options contracts. Therefore, Applicant is entitled to a registration for the
CHI Mark.
II.
CONCLUSION
Based on the foregoing, Applicant’s Substitute Specimens show the use of the CHI Mark
as a source identifier for Applicant’s Investment Services. Because Applicant’s CHI Mark is
used in the specimens of record as the source identifier for the provision of the Applicant’s
Investment Services, Applicant respectfully requests that the Board reverse the Examining
Attorney’s refusal to register the CHI Mark, accept the specimens submitted by Applicant and
allow the Application to proceed to the registration.
Respectfully Submitted,
CHICAGO MERCANTILE
EXCHANGE INC
Dated: _October 27, 2014____
By:
/Tatyana V. Gilles/__
Joseph T. Kucala, Jr.
Tatyana V. Gilles
NORVELL IP LLC
P.O. Box 2461
Chicago, IL 60690
Tel: 888-315-0732
Fax: 312-268-5063
officeactions@norvellip.com
Attorneys for Applicant
7
WEATHER PRODUCTS
CME Hurricane Index Futures and Options
Three types of contracts for Hurricane futures and options –
covering specific regional locations and actual named hurricanes.
Overview
Market Participants
Following the devastating 2005 hurricane
• Insurance and reinsurance companies
Benefits
season that caused an estimated $79 billion
• Hedge funds
• An additional way to help insurers
in damage, it became apparent there was not
• Energy companies
and others transfer risk to the
unlimited capacity in the insurance industry to
• Pension funds
capital markets
insure customer claims. CME Group listened
• State governments
• Mitigate exposures for actual named
to the marketplace and developed three types
• Utility companies
hurricanes and speciic regional
locations
of contracts for Hurricane futures and options.
The underlying indexes for Hurricane futures
Contract Types
and options on futures are calculated by MDA
• Hurricane futures and options
Information Systems, Inc., the leading authority
• Hurricane Seasonal futures and options
on extreme-risk modeling.
• Hurricane Seasonal Maximum futures
• Increase insurance capacity in order to
insure customers or hedge businesses
and options
About the Index
CME Hurricane Index™ (CHI™) determines a numerical measure of the potential for damage from a hurricane, using publicly available data from the
National Hurricane Center of the National Weather Service. The CHI incorporates sustained wind speed and the radius of hurricane force winds and is a
continuous measurement.
The commonly used Safir-Simpson Hurricane Scale (SSHS) classiies hurricanes in categories from 1 to 5; however there are a number of features which
make the scale less than optimal for use by the insurance community and the public at large. For example, meteorologists have had to quantify SSHS
categories as either ‘strong’ or ‘weak’ in order to make a proper distinction of a storm. As a case in point, Katrina was described as a weak category 4 storm
at the time of its landfall but this did not provide a real estimate to the actual physical impact. And Hurricane Wilma in 2005 was at one point in its life
the strongest storm on record. However, the CHI highlights that at its strongest, Hurricane Katrina had more potential for damage than Wilma, despite its
lower wind speed, since Katrina was a far wider storm. The Safir-Simpson scale would be unable to make this distinction clear.
CME HURRICANE INDEX FUTURES AND OPTIONS CONTRACTS
HURRICANE INDEX FUTURES
OPTIONS ON HURRICANE INDEX FUTURES
$1,000 times the respective CHI
Contract Size
Quotation
CHI Index Points
Tick Size
0.1 CHI Index Point
Tick Value
0.1 CHI Index Point = $100 x 10 = 1 tick/$1,000
Contracts
Traded
At the beginning of each season storm names are used from a list, starting with A and ending with Z, maintained by the World Meteorological
Organization. In the event that more than 21 named events occur in a season, additional storms will take names from the Greek alphabet:
Alpha, Beta, Gamma, Delta, and so on
Locations
Named hurricanes making landfall in the Eastern U.S. (Brownsville, TX to Eastport, ME)
Named hurricanes occurring within the CHI-Cat-In-A-Box – Galveston-Mobile
(area bounded by 95°30’0”W on the West, 87°30’0”W on the East, 27°30’0”N on the South, and the corresponding segment of the U.S. coastline on the North)
Events begin with a one and ends with a zero (0 represents 10)
Ticker Symbols
HX1-HX0 = CHI Hurricane Index storms beginning with the letters A-J
HG1-HG0 = CHI Hurricane Index storms beginning with the letters K-V
HF1-HF0 = CHI Hurricane Index storms beginning with the letters W-Iota
HP1-HP0 = CHI Cat-In-A-Box – Galveston-Mobile storms A-J
HS1-HS0 = CHI Cat-In-A-Box – Galveston-Mobile storms K-V
HN1-HN0 = CHI Cat-In-A-Box – Galveston-Mobile storms W-Iota
Termination of
Trading
Futures trading shall terminate at 9:00 A.M. on the irst Exchange business day that is at least ive calendar days following the last forecast/advisory issued by the National Hurricane Center (NHC) for the named storm, provided that both the NHC and the Hydrometeorological Prediction
Center have stopped issuing advisories for that named storm, but in no event shall trading terminate prior to the irst Exchange business day that
is at least ive calendar days following January 1, or later than the irst business day that is at least ive calendar days following December 31. If a
particular named storm is unused (i.e. that storm has not formed), trading shall terminate at 9:00 A.M. on the irst Exchange business day that is
at least ive calendar days following December 31.
Futures trading shall terminate at 9:00 A.M. on the irst Exchange business day that is at least ive calendar days following the dissipation or exit
from the designated area of a named storm, provided that both the NHC and the Hydrometeorological Prediction Center have stopped issuing
advisories for that named storm, but in no event shall trading terminate prior to the irst Exchange business day that is at least ive calendar days
following January 1, or later than the irst business day that is at least ive calendar days following December 31. If a particular named storm is
unused (i.e. that storm has not formed), trading shall terminate at 9:00 A.M. on the irst Exchange business day that is at least ive calendar days
following December 31.
Strike Price
Interval
N/A
1 Index Point (e.g., 10, 11, 12, etc.)
Exercise
N/A
American-style (exercised any time up to and including last trading
day (LTD))
Settlement
All futures contracts remaining open at the termination of trading
shall be settled using the respective CHI inal value reported by
MDA Information Systems, Inc. for that named event
N/A
All futures contracts remaining open at the termination of trading
shall be settled using the respective CHI-Cat-In-A-Box inal value
reported by MDA Information Systems, Inc. for that named event,
using the maximum calculated CHI value while the hurricane is
within the designated area
Position Limits
Position accountability for positions exceeding 10,000 contracts in
any contract month
Position accountability for positions exceeding 10,000
futures-equivalent contracts net on the same side of the market in
any contract month
Trading Hours
Offered exclusively on the CME Globex electronic trading platform
on Sundays through Thursdays, 5:00 p.m. – 3:15 p.m. CT the
following day (9:00 a.m. CT LTD)
Traded via open outcry in the NASDAQ-100 pit on Mondays
through Fridays, 8:30 a.m. – 3:15 p.m. CT (9:00 a.m. CT LTD)
Futures trading is not suitable for all investors, and involves the risk of loss. Futures are a leveraged investment, and because only a percentage of a contract’s value is required to trade, it is possible to lose more than the amount of money
deposited for a futures position. Therefore, traders should only use funds that they can afford to lose without affecting their lifestyles. And only a portion of those funds should be devoted to anyone trade because they cannot expect to proit
on every trade. All references to options refer to options on futures.
CME Group is a trademark of CME Group Inc. The Globe logo, CME, Chicago Mercantile Exchange, E-mini and Globex are trademarks of Chicago Mercantile Exchange Inc. CBOT and Chicago Board of Trade are trademarks of the Board of Trade
of the City of Chicago. NYMEX, New York Mercantile Exchange and ClearPort are trademarks of New York Mercantile Exchange Inc. COMEX is a trademark of Commodity Exchange Inc. All other trademarks are the property of their respective
owners.
The information within this brochure has been compiled by CME Group for general purposes only. CME Group assumes no responsibility for any errors or omissions. Additionally, all examples in this brochure are hypothetical situations, used for
explanation purposes only, and should not be considered investment advice or the results of actual market experience.
All contracts herein are listed with, and subject to the rules and regulations of, Chicago Mercantile Exchange, Inc.
All matters pertaining to rules and speciications herein are made subject to and are superseded by oficial CME, CBOT and NYMEX rules. Current rules should be consulted in all cases concerning contract speciications.
Copyright © 2012 CME Group. All rights reserved.
CME HURRICANE INDEX SEASONAL FUTURES AND OPTIONS CONTRACTS
HURRICANE SEASONAL FUTURES
OPTIONS ON HURRICANE SEASONAL FUTURES
$1,000 times the seasonal total for the respective CHI
Contract Size
Quotation
CHI Index Points
Tick Size
0.1 CHI Index Point
Tick Value
0.1 CHI Index Point = $100
Contracts
Traded
Expressed in terms of the accumulated CHI for all hurricanes that occur within a speciic location between January 1 and December 31
inclusive of a calendar year
Expressed in terms of the accumulated CHI-Cat-In-A-Box values for all hurricanes that occur within a speciic geographic area between January 1
and December 31 inclusive of a calendar year
Locations
Gulf Coast
(Brownsville, TX to AL/FL Border)
Gulf Coast and Florida
(Brownsville, TX to Fernandina Beach, FL)
Florida
(AL/FL Border to Fernandina Beach, FL)
Florida Gold Coast
(Card Sound Bridge, FL to Jupiter Inlet, FL)
Southern Atlantic Coast
(Fernandina Beach, FL to NC/VA Border)
Florida + Southern Atlantic + Northern Atlantic
(AL/FL Border to Eastport, ME)
Northern Atlantic Coast
(NC/VA Border to Eastport, ME)
CHI-Cat-In-A-Box − Galveston-Mobile
(area bounded by 95°30’0”W on the West, 87°30’0”W on the East,
27°30’0”N on the South, and the
corresponding segment of the U.S. coastline on the North)
Eastern U.S.
(Brownsville, TX to Eastport, ME)
Ticker Symbols
HGA = Gulf Coast
HFA = Florida
HSA = Southern Atlantic Coast
HNA = Northern Atlantic Coast
HXA = Eastern U.S.
FGM = Gulf Coast and Florida
HDA = Florida Gold Coast
HAA = Florida + Southern Atlantic + Northern Atlantic
HPA = CHI-Cat-In-A-Box – Galveston-Mobile
Termination of
Trading
OGA = Gulf Coast
OFA = Florida
OSA = Southern Atlantic Coast
ONA = Northern Atlantic Coast
OXA = Eastern U.S.
FGM = Gulf Coast and Florida
HDA = Florida Gold Coast
AHA = Florida + Southern Atlantic + Northern Atlantic
OPA = CHI-Cat-In-A-Box – Galveston-Mobile
Futures trading shall terminate at 9:00 A.M. on the irst Exchange business day that is at
least ive calendar days following December 31.
Strike Price
Interval
N/A
1 Index Point (e.g., 10, 11, 12, etc.)
Exercise
N/A
American-style (exercised any time up to and including LTD)
Settlement
All futures contracts remaining open at the termination of trading
shall be settled using the respective CHI inal value reported by
MDA Information Systems, Inc. for that numbered event
N/A
All futures contracts remaining open at the termination of trading
shall be settled using the respective CHI-Cat-In-A-Box inal value
reported by MDA Information Systems, Inc. for that numbered
event, using the maximum calculated CHI value while the hurricane is within the designated area
Position Limits
Position accountability for positions exceeding 10,000 contracts in
any contract month
Position accountability for positions exceeding 10,000
futures-equivalent contracts net on the same side of the market in
any contract month
Trading Hours
Offered exclusively on the CME Globex electronic trading platform
on Sundays through Thursdays, 5:00 p.m. – 3:15 p.m. CT the
following day (9:00 a.m. CT LTD)
Traded via open outcry in the NASDAQ-100 pit on Mondays
through Fridays, 8:30 a.m. – 3:15 p.m. CT (9:00 a.m. CT LTD)
For more information on CME Hurricane Index futures and options,
visit www.cmegroup.com/hurricane.
For real-time prices on CME Hurricane Index futures, visit www.cmegroup.com/weatherquotes.
CME HURRICANE INDEX SEASONAL MAXIMUM
FUTURES AND OPTIONS CONTRACTS
HURRICANE SEASONAL MAXIMUM FUTURES
OPTIONS ON HURRICANE SEASONAL MAXIMUM FUTURES
$1,000 times the respective CHI
Contract Size
Quotation
CHI Index Points
Tick Size
0.1 CHI Index Point
Tick Value
0.1 CHI Index Point = $100
Contracts
Traded
Expressed in terms of the CHI for the largest hurricane to make landfall within a speciic location between January 1 and December 31
inclusive of a calendar year
Expressed in terms of the largest CHI-Cat-In-A-Box value for all hurricanes that occur within a speciic geographic area between January 1
and December 31 inclusive of a calendar year
Locations
Gulf Coast
(Brownsville, TX to AL/FL Border)
Gulf Coast and Florida
(Brownsville, TX to Fernandina Beach, FL)
Florida
(AL/FL Border to Fernandina Beach, FL)
Florida Gold Coast
(Card Sound Bridge, FL to Jupiter Inlet, FL)
Southern Atlantic Coast
(Fernandina Beach, FL to NC/VA Border)
Florida + Southern Atlantic + Northern Atlantic
(AL/FL Border to Eastport, ME)
Northern Atlantic Coast
(NC/VA Border to Eastport, ME)
CHI-Cat-In-A-Box − Galveston-Mobile
(area bounded by 95°30’0”W on the West, 87°30’0”W on the East,
27°30’0”N on the South, and the
corresponding segment of the U.S. coastline on the North)
Eastern U.S.
(Brownsville, TX to Eastport, ME)
Ticker Symbols
HGM = Gulf Coast
HFM =Florida
HSS = Southern Atlantic Coast
HNM = Northern Atlantic Coast
HXM = Eastern U.S.
GFM = Gulf Coast and Florida
HDM =Florida Gold Coast
HAM = Florida + Southern Atlantic + Northern Atlantic
HPM = CHI-Cat-In-A-Box – Galveston-Mobile
Termination of
Trading
OGM = Gulf Coast
OFM = Florida
OSM = Southern Atlantic Coast
ONM = Northern Atlantic Coast
OXM = Eastern U.S.
GFM = Gulf Coast and Florida
HDM = Florida Gold Coast
MHA = Florida + Southern Atlantic + Northern Atlantic
OPM = CHI-Cat-In-A-Box – Galveston-Mobile
Futures trading shall terminate at 9:00 A.M. on the irst Exchange business day that is
at least ive calendar days following December 31.
Strike Price
Interval
N/A
1 Index Point (e.g. 10, 11, 12, etc.)
Exercise
N/A
American-style (exercised any time up to and including LTD)
Settlement
All futures contracts remaining open at the termination of trading
shall be settled using the respective CHI seasonal maximum inal
value reported by MDA Information Systems, Inc.
N/A
All futures contracts remaining open at the termination of trading
shall be settled using the respective CHI seasonal maximum
Cat-In-A-Box inal value reported by MDA Information Systems, Inc.
Position Limits
Position accountability for positions exceeding 10,000 contracts in
any contract month
Position accountability for positions exceeding 10,000
futures-equivalent contracts net on the same side of the market in
any contract month
Trading Hours
Offered exclusively on the CME Globex electronic trading platform
on Sundays through Thursdays, 5:00 p.m. – 3:15 p.m. CT the
following day (9:00 a.m. CT LTD)
Traded via open outcry in the NASDAQ-100 pit on Mondays
through Fridays, 8:30 a.m. – 3:15 p.m. CT the following day
(9:00 a.m. CT LTD)
For more information on Weather futures and options, visit www.cmegroup.com/weather.
CME GROUP HEADQUARTERS
20 South Wacker Drive
Chicago, Illinois 60606
cmegroup.com
CME GROUP REGIONAL OFFICES
info@cmegroup.com
800 331 3332
312 930 1000
New York
Calgary
Tokyo
212 299 2000
London
403 444 6876
Houston
+81 3 5403 4828
+ 44 20 7796 7100
Singapore
+65 6593 5555
713 658 9292
São Paulo
+55 11 2565 5999
Washington D.C.
202 638 3838
WT106/50/0512
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
U.S. APPLICATION SERIAL NO. 77199918
MARK: CHI
CORRESPONDENT ADDRESS:
TATYANA V GILLES
NORVELL IP LLC
*77199918*
GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/trademarks/index.jsp
1776 ASH STREET
NORTHFIELD, IL 60093
TTAB INFORMATION:
http://www.uspto.gov/trademarks/process/appeal/index.js
p
APPLICANT: CHICAGO MERCANTILE EXCHANGE INC.
CORRESPONDENT’S REFERENCE/DOCKET NO:
13271-364
CORRESPONDENT E-MAIL ADDRESS:
officeactions@norvellip.com
The trademark examining attorney has carefully reviewed applicant's 4th request for reconsideration
issuing from a request for remanded and is denying the request for the reasons stated below. See 37
C.F.R. §2.64(b); TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a). The refusal made final in the Office
action dated October 5, 2012 and last refused reconsideration on July 14, 2014 and is maintained and
continued as FINAL. See TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a).
In the present case, applicant's request for remand of August 8, 2014 has not resolved all the
outstanding issues, nor does it raise a new issue or provide any new or compelling evidence with
regard to the outstanding issues in the final Office action. Accordingly, the request is denied.
EXAMINING ATTORNEY’S SUPPLEMENTAL APPEAL BRIEF
Final refusal of the applicant’s specimens of use issued on October 5, 2012 because the specimens failed
to function as a service mark for the services recited in the application. Trademark Act Sections 1, 2, 3
and 45, 15 U.S.C. §§1051-1053, 1127. The following addresses materials provided by the applicant with
a request for remand filed August 8, 2014.
FACTS
The applicant seeks registration of the mark, CHI, for use in connection with “Investment services,
namely, providing futures, options contracts related to hurricanes for trading on an exchange.”
The specimens provided for reconsideration on December 9, 2013 were regarded by the examiner as
untimely; however, the Trademark Trial and Appeal Board accepted the specimens and has deemed the
materials to be part of the record. The examiner asserted that the evidence was not properly
submitted. The issue is obviated by the applicant’s provision of a verified statement regarding use of
the specimens in commerce in the materials submitted in this request for remand.
The specimens provided on December 9, 2013, several Chapters from the CME Rulebook, were found
objectionable because they were not understood to be acceptable to show use of the mark in
advertising or marketing materials or other material provided to consumers for the services that shows
the mark used in the actual sale, rendering or advertising of the services. TMEP §1301.04 et seq. The
applicant’s statements regarding who are the consumers for the applicant’s services and statements
regarding how the substitute specimens are used by the consumers for the services remain at issue.
ARGUMENTS
The originally provided specimens, submitted on February 7, 2012, comprised advertising for the
services, and established the consumers for the applicant’s services. In the first page of the marketing
material specimens, “Market Participants” were described as “Insurance and reinsurance companies,
Hedge funds, Energy companies, Pension funds, State Governments, Utility companies.” The examiner
attaches additional marketing material from the applicant’s website, found at
http://www.cmegroup.com/trading/weather/files/weather-products-brochure.pdf, that further
describes other main users of the applicant’s weather futures and options contracts and that expands
the users of the services to include “Local Distribution Companies, Construction, Manufacturing,
Agriculture, Retailers and “Transportation” sectors. See the attached marketing material from CME
GROUP entitled WEATHER PRODUCTS (in two pages) used to show who are the consumers for the
services. Note that the services are not characterized as CHI Futures or CHI Options contracts in any of
these materials. See also an attached additional article by a third party, Can You Get Rich Betting on the
Weather, that explains weather futures for the layman and describes who participates in the weather
futures markets, found at http://mentalfloss.com.
At the bottom of the second page of the specimens submitted by the applicant on February 7, 2012, a
page entitled “CME HURRICANE INDEX FUTURES AND OPTIONS CONTRACTS,” the applicant provided the
following guidance in very small lettering:
Futures trading is not suitable for all investors, and involves the risk of loss. Futures are a
leveraged investment, and because only a percentage of a contract’s value is required to trade,
it is possible to lose more than the amount of money deposited for a futures position.
Therefore, traders should only use funds that they can afford to lose without affecting their
lifestyles. And only a portion of those funds should be devoted to any one trade because they
cannot expect to profit on every trade.
This guidance that appears in very small print at the bottom of the page, while accompanied by a
reference to the CME Group rules, does not specify where those rules (The CME Rulebook) can be
found. The text also suggests that the applicant recognizes that all consumers for these contracts are
not necessarily sophisticated financial product consumers. This warning to consumers is followed by the
equally small claim of trademarks and a statement that further information about CME Group and its
products can be found at www.cmegroup.com. Following that statement is copyright protection
information.
None of these materials purport to offer the CME Rulebook as additional marketing information or as a
user reference for making a purchasing decision or for managing futures and options contracts. The
examiner does not find such a reference in any of the marketing materials.
In the request for reconsideration of December 9, 2013, the applicant has asserted that the Members of
the Chicago Mercantile Exchange are the consumers for the services, and that Members use the CME
(Chicago Mercantile Exchange) Rulebook that were provided as the substitute specimens. This
statement was not verified or supported by evidence, and nothing in the record provides a nexus
between the consumers described in the advertising materials, and the CME Members who use the CME
Rulebook specimens. The CME Rulebook, Chapter 4 Rules of Enforcement, 400, General Provisions,
defines the term Members, and explains that Members are deemed to know, consent to and be bound
by all Exchange Rules. It is not indicative of the Members being the primary consumers for the
applicant’s futures and options contracts. While it may be that Members are allowed to buy and sell for
their own benefit (this is not addressed in the materials provided by the applicant), the applicant’s
marketing materials suggest that the primary consumers for the futures and options contracts are those
noted above in the marketing materials, and not the CME Members.
Attached find a definition of “Exchange Members,” from The Free Dictionary by Farlex, Farlex Financial
Dictionary. © 2012 Farlex, Inc. that defines EXCHANGE MEMBERS as “a person, normally a broker, who
has membership on a stock exchange. This means that he/she is allowed to make trades on the floor of
that exchange. Most exchanges do not allow firms to be members, so the membership for a member
firm formally belongs to one or more of its employees.”
The applicant’s Rulebook allows for Member Firms. A MEMBER FIRM is a broker-dealer firm in which at
least one of the principal officers is allowed to trade on the floor of an exchange. To become a member
one needs to purchase a membership or a seat on the exchange. The Free Dictionary by Farlex, Farlex
Financial Dictionary. © 2012 Farlex, Inc. The American Heritage Dictionary of the English Language, 4th
Ed., ©2000 by Houghton Mifflin Co., Updated 2009, defines a “Member Firm” as “A securities firm with
officers or partners who are members of an organized exchange.”
The advertising materials provided by the applicant do not invite membership on the CME, but appear to
be directed to persons and entities with hurricane exposure who may be interested in investing in the
futures and options contracts to hedge against weather induced financial losses in the conduct of their
businesses. The examiner has not found, and the applicant has not shown, that these two groups (those
with hurricane exposure and Members of the CME) are the same consumers, or that Members are the
primary or end consumers for the applicant’s futures and options contracts. The definitions of
“exchange members” and “member firms” indicate that the role of exchange members is that of a
broker, and not that of the end consumer. It is for this reason that the applicant’s specimens from the
CME Rulebook, submitted December 9, 2013 in a Motion to Suspend and provided with this most recent
Request for Remand on August 8, 2014 are not viewed as acceptable to show use of the mark in
advertising or marketing materials or other material that shows the mark used in the actual sale,
rendering or advertising of the services in a manner that the consumers for the services would
encounter the mark and understand the mark to identify the source of the applicant’s services. TMEP
§1301.04, et seq.
The Examiner asserted that the chapters from its CME Rulebook, provided as substitute specimens on
December 9, 2013 and again August 8, 2014, Chapters 423, 423A, 427 and 428, appear in the CME
Rulebook that has, when printed, a seven to eight page index of chapters. This index was made available
for consideration with this request for remand. The examiner characterized the material as “buried”.
Finding use of the mark in this information, particularly as the chapters do not appear to be referenced
in the marketing materials, is tedious. It is also noted that the chapter titles do not reference CHI
Futures or CHI Options, but rather: Chapter 423 CME Hurricane Index Futures, Chapter 423A Options on
CME Hurricane Index Futures, Chapter 427 CME Hurricane Index Seasonal Futures, and Chapter 428
CME Hurricane Index Seasonal Maximum Futures.
As stated previously in brief, while the proposed mark CHI appears to identify the source of the index
services used for establishing the value of the applicant’s futures and options contracts, the proposed
mark does not serve to identify the source of the investment services for which the applicant seeks
registration in this application. Again, it is noted that this mark has subsequently been registered for
“Compiling, providing and updating a financial index measuring potential damage from a hurricane,”
U.S. Registration No. 4315763. The specimens accepted for registration of the mark for the indexing
services are some of the same specimens submitted for consideration in this application.
CONCLUSION
For these reasons, and in view of the evidence, refusal to register the mark is CONTINUED and
MAINTAINED as FINAL because the specimens fail to function as a service mark for the services recited in
the application. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.
Resumption of the Appeal
The applicant has already filed a timely notice of appeal with the Board, and briefs have been filed. The
Board will be notified to resume the appeal. See TMEP §715.04(a).
Respectfully submitted,
/Linda A. Powell/
Linda A. Powell
Examining Attorney
L.O. 106 United States Patent and Trademark Office
571-272-9327
linda.powelll@uspto.gov
Mary I. Sparrow
Managing Attorney
Law Office 106
TRADEMARK
Case No. 13439-364
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of:
Chicago Mercantile Exchange Inc.
Serial No.:
77/199,918
Filing Date:
June 7, 2007
Mark:
CHI
Examining Attorney:
Linda A. Powell
Law Office 106
APPLICANT’S REPLY BRIEF IN SUPPORT OF REGISTRATION FOR THE MARK CHI IN
INTERNATIONAL CLASS 36
Respectfully submitted,
CHICAGO MERCANTILE
EXCHANGE INC.
Dated: August 8, 2014
By:
/J. Ryan Hinshaw/
Joseph T. Kucala, Jr.
J. Ryan Hinshaw
Norvell IP llc
1776 Ash Street
Northfield, IL 60093
Tel: 888.315.0732
Fax: 312.268.5063
officeactions@norvellip.com
ATTORNEYS FOR APPLICANT
I.
INTRODUCTION
This appeal boils down to one question: Do the specimens in the record show use of the
CHI trademark in connection with the “investment services, namely, providing futures, options
contracts related to hurricanes for trading on an exchange?” The answer is Yes. Therefore, the
Board should reverse the Examining Attorney’s refusal to register and allow the application to
proceed to registration.
II.
BACKGROUND
Because the Examining Attorney brief withdrew one of the prior refusals to register,
the remaining issue on appeal is whether Applicant’s specimen sufficiently shows the mark CHI
(“CHI Mark”) functioning as a service mark to identify and distinguish Applicant’s investment
services, namely, providing futures, options contracts related to hurricanes for trading on an
exchange” (“Investment Services”) from those of others and to indicate the source of those
services. A detailed summary of the prosecution history is set forth in Applicant’s main brief. In
the Examining Attorney’s opinion, the CHI Mark is not used in the specimens of record to
identify the source of Applicant’s Investment Services. Applicant respectfully disagrees.
To address the new issues raised by the Examining Attorney and simplify the appeal,
Applicant moved to remand the application for consideration of additional evidence in support of
registration of the CHI mark, and the Board granted the motion. Specifically, Applicant
submitted substitute specimens (“Substitute Specimens”) in its Request for Further Examination
and Consideration to the Examining Attorney and provided supporting information on the use
and function of the Substitute Specimens. See Dec. 9, 2013 Req. for Further Examination and
Consideration. Ultimately, the Examining Attorney refused to accept this evidence and raised
new issues regarding the submitted evidence. However, the record clearly shows use of the
CHI Mark in connection with Investment Services and Examining Attorney’s arguments to the
contrary are unsupported. Moreover, Examining Attorneys’ new objections to the evidence are
being addressed in a Request for Remand and Request for Further Consideration filed
concurrently herewith.
III.
ARGUMENT
A. Applicant’s Substitute Specimens Clearly Show Use of the CHI Mark In
Connection with the Identified Investment Services.
1. Applicant’s Specimens Support Registration of the CHI Mark In Connection
With Investment Services.
The standard of review for service mark specimens is simple: there must be an
association between the service mark and the services. TMEP § 1301.04. There are no
stringent requirements for service mark specimens. In the present case, the specimens need
only show use of the CHI mark in connection with the Investment Services, namely, hurricane
futures or options contracts. A specimen that shows the mark as used in the course of
rendering or performing the services is also generally acceptable. Where the record shows that
the mark is used in performing (as opposed to advertising) the services, a reference to the
services on the specimen itself may not be necessary. In re Metriplex Inc., 23 USPQ2d 1315
(TTAB 1992); TMEP § 1301.04. Based on the evidence contained in the record, the Examining
Attorney acknowledges that the CHI mark “is used in connection with the applicant’s futures and
options contracts . . . .” Ex. Brief p.4. Therefore, the Board should find the specimens of record
acceptable.
The Examining Attorney’s substantive objection to the Substitute Specimens (attached
hereto as Exhibit A) relates to whether the material constitutes advertising for the services or
would be used by consumers in making purchasing decisions. “The Board has observed that
use in the ‘rendition’ of services should be viewed as an element of the ‘sale’ of services under
Section 45 of the [Trademark] Act.” In re ICE Futures U.S., Inc., 85 USPQ2d 1664, 2008 WL
162813 (TTAB), at *5 (quoting In re Red Robin Enterprises, Inc., 222 USPQ 911, 913 (TTAB
1984). See also In re Metriplex, supra at 1316; In re Eagle Fence Rentals, Inc., 231 USPQ 228,
330 (TTAB 1986). “Also, the Board has recognized that the service need not be referenced
explicitly even in a specimen which purports to show use of a mark in the advertisement of
promotion of the services.” Id. “The context of use and the history of applicant’s exclusive use
in the industry reflected in the record” may be sufficient to show an applicant’s use of its marks
in connection with the identified services. Id.
Applicant’s specimens and Substitute Specimens clearly show Applicant’s CHI Mark
used in the rendition of Applicant’s Investment Services, and immediately next to descriptions of
Applicant’s Investment Services, namely, futures and options contracts, e.g. “CHI futures and
options,” “CHI contract,” “CHI contracts,” and “CHI future.” The commercial impression created
by each specimen is that CHI is an investment service, namely futures or options contracts.
The fact that Applicant’s specimens do not feature the words “investment services” adjacent to
the CHI mark in every specimen does not render every specimen insufficient. “In the case of a
specimen intended to show use of the mark in the sale or ‘rendering’ of the services, the
specimen need not and often will not include an explicit reference to the service. Id. (quoting In
re Metriplex at 1316). See also In re Int’l Envtl. Corp., 230 USPQ 688, 691 (TTAB
1986)(specimen showing use of mark in surveys used to promote service with no mention of
“distributorship services” found acceptable). The following excerpt from Applicant’s Substitute
Specimen definitively shows why the specimen is acceptable:
2. Applicant’s Mark Can Cover Different Services.
The Examining Attorney misplaces focus on Applicant’s registration of the CHI mark in
connection with certain index services, as identified in U.S. Reg. No. 4315763. Because of this
registration, the Examining Attorney believes all use of the CHI mark refers to the index and
ignores the other Investment Services. However, Applicant submits that its specimens show
the mark identifying both the services in this application and the services in Registration No.
4315763. As demonstrated in the record, Applicant uses the CHI Mark in connection with both
types of services which are not mutually exclusive.
3. Examining Attorney’s Case Law Fails to Support Her Position
The Examining Attorney’s reliance on In re Moody’s Investors Services, Inc. also is
misplaced. 13 USPQ2d 2043 (TTAB 1989). Moody’s sought to register “Aaa” as a service
mark in connection with “providing ratings of fixed interest rate obligations.” Id. at 2044. The
Board found that “the symbol ‘Aaa’ would be perceived only as certifying that a particular bond
is a safe investment,” and not “as indicating the source of rating services.” Id. at 2048. Further,
the Board found that “‘Moody’s’ provides rating services,” and “Aaa” is merely “a rating assigned
to a particular fixed interest rate obligation.” Id. The present facts are distinguishable.
The Examining Attorney misunderstands Applicant’s specimens and services
because the following statement is incorrect: “the mark, ‘CHI’, is used in connection with the
applicant’s futures and options contracts in that the mark is used on indexes used for valuation
of futures and options contracts.” Ex. Brief p.4 (emphasis in original). When traded on financial
exchanges, the CHI mark signals Applicant’s two services; 1) compiling, providing, and updating
a financial index measuring potential damage from a hurricane (the subject of U.S. Reg. No.
4315763), and 2) providing futures, options contracts related to hurricanes for trading on an
exchange (the subject of this application). Simply put, CHI Mark is used to measure potential
risk, and to offer contracts to willing buyers based on those risks.
Moreover, the Board’s decision in In re Moody’s shows that Applicant’s CHI Mark is
capable of registration as a service mark. The applicant in In re Moody’s submitted a booklet
including a list of its goods and services, and the goods and services appeared under “a
subheading consisting of the mark ‘Moody’s’ and matter describing that particular item (i.e.,
‘Moody’s Manuals,’ ‘Moody’s Trust and Estate Services,’ etc.).” In re Moody’s at 2046. Clearly,
the mark Moody’s functioned as a service mark. In that case, the Board found that the applicant
only used the mark “Aaa” as a rating symbol in the booklet, and not as a service mark. In
contrast, Applicant’s use of the CHI mark, as shown in the prosecution history, more closely
resembles use of the mark “Moody’s” than the mark “Aaa” because Applicant’s Rulebook
contains numerous references to “CHI futures,” “CHI futures contracts,” and “CHI Seasonal
Futures,” see Examiner’s Reconsideration Letter of July 14, 2014 (Exhibits). The specific use of
“CHI-Cat-In-A-Box – Galveston-Mobile” is merely one category of contracts offered under the
CHI mark. Applicant’s Specimen, April 5, 2013.
B. The Evidence Is Properly Before the Board for Consideration.
1. Applicant’s Evidence Is Proper.
The Examining Attorney found the substitute specimens unacceptable, and without
further explanation, declared that the substitute specimens were “not information of the kind
believed to be used by consumers for the futures and options contracts in making a purchasing
decision.” Req. for Recon. Denied p.3. Furthermore, rather than provide any justification for the
refusal, the Examining Attorney attacked Applicant’s attorney’s experience dealing in the affairs
of the Applicant, claiming:
“The applicant’s attorney has made statements regarding the consumers for
the applicant’s services and statements regarding how the substitute
specimens are used by consumers. There is no actual proof to support these
statements in the record, and there is no showing that the applicant’s attorney
has expertise in this field.”
Id. at p.4. To support her position, the Examining Attorney relies upon the Board’s decision in In
re U.S. Tsubaki, Inc., 109 U.S.P.Q.2d 2002 (TTAB 2014); however, this decision is inapposite
here. The U.S. Tsubaki case involved an attorney’s opinion of whether certain specimens
showed a mark used in association with goods at the point-of-sale. Id. Here, Applicant, through
its counsel, can certainly provide information regarding the operation of Applicant and the use of
a Rulebook published by Applicant. Moreover, the actual documents submitted in the record
describe the use of the CHI mark in Applicant’s Rulebook. These are not mere arguments
before the Board, but Applicant’s own evidence submitted during the prosecution of the
application during remand of the application. Moreover, Applicant seeks to further clarify this
information in its Request for Remand filed herewith.
More importantly, the U.S. trademark laws do not require submission of advertising
specimens for service marks. Instead, there is a great deal of flexibility for service marks. One
of the specimens provided is Applicant’s Rulebook, which is used in connection with the
rendering of services. Therefore, Examining Attorney’s argument is unsupported.
2. Applicant Satisfied the Requisite Good Cause Requirement.
The Examining Attorney claims that Applicant’s submission of the Substitute Specimen
was untimely because Applicant did not show good cause to remand the application. Req. for
Recon. Denied, p.3. To the contrary, Applicant demonstrated good cause for remanding the
application in Applicant’s Motion to Suspend of December 9, 2013. Applicant pointed out that
the Examining Attorney raised a new issue in the Examiner’s Brief regarding the specimen, and
that a substitute specimen could address this issue while conserving the Board’s resources.
The Board agreed and granted the motion to remand on December 13, 2013. See Jurisdiction
Restored / Remanded to Examiner.
3. Applicant Supports the Substitute Specimens.
The Examining Attorney rejected the Substitute Specimens because the Request for
Further Examination lacked a declaration. In Applicant’s Request for Further Examination,
Applicant clearly stated that the “substitute specimens were in use in commerce prior to the
expiration of the filing deadline for the Statement of Use.” Examining Attorney’s objection can
be easily addressed and Applicant has submitted such a declaration via a Request for Remand
and Request for Further Examination. If the Examining Attorney had a concern about such a
declaration, she could have easily telephoned Applicant’s counsel or issued an office action.
This is a non-issue and should not be used to deny registration of the CHI Mark.
C. Doubt As To The Sufficiency Of The Substitute Specimen Should Be Resolved
In Favor Of Applicant.
On remand, Applicant submitted substitute specimens showing use of the CHI mark
in close proximity with the descriptive modifiers characterizing Applicant’s Investments Services,
namely “futures” and “options,” e.g., “CHI futures,” “CHI futures contract,” and “CHI options.”
These specimens reflect a clear association between the CHI Mark and Applicant’s Investment
Services, namely, providing futures, options contracts related to hurricanes for trading on an
exchange. The Substitute Specimens are select portions from Applicant’s Rulebook, which
governs the trading of hurricane futures and options under the CHI trademark. The information
in this Rulebook is a critical component regarding the trading of these contracts. For example,
the Rulebook provides information to Applicant’s customers, such as traders and institutions,
regarding the terms of the specific CHI futures or options contract, settlement positions, etc.
CHI futures and options contracts are purchased and traded by sophisticated individuals and
entities and are not traded on a whim. Instead, CHI futures and options contracts typically form
an important component of a customer’s overall risk management requiring the customer to
consider the risk, trading unit, price increments, and settlement procedures prior to purchasing
any such CHI futures or options contracts.
As Applicant pointed out in its Appeal Brief, “the Board [has] demonstrated its flexible
approach as to service marks because of the inherent difficulty of proving use of a service mark.
See, e.g., In re Ralph Mantia, 54 U.S.P.Q.2d 1284 (TTAB 2000). Moreover, to the extent that
the Board has any doubt on the question of whether the specimens of record are acceptable to
show Applicant’s use of the CHI mark, this doubt will be resolved in favor of Applicant. See In
Re Btio, Ser. No. 75/712,224, 2001 WL 873280 (TTAB 2001).
IV.
CONCLUSION
Concurrently herewith, Applicant has filed a further Request for Remand. In her
denial of Applicant’s Request for Further Examination, Examining Attorney identified new issues
regarding acceptability of the specimens and Applicant has fully complied with these issues in
the Request for Remand.
Because Applicant’s CHI Mark is used in the specimens of record as the source
identifier for the provision of the Applicant’s Investment Services, Applicant respectfully requests
that the Board reverse the Examining Attorney’s refusal to register the CHI Mark, accept the
specimens submitted by Applicant and allow the Application to proceed to the registration.
Respectfully submitted,
CHICAGO MERCANTILE
EXCHANGE INC.
Dated: August 8, 2014
By:
/J. Ryan Hinshaw/
Joseph T. Kucala, Jr.
J. Ryan Hinshaw
Norvell IP llc
1776 Ash Street
Northfield, IL 60093
Tel: 888.315.0732
Fax: 312.268.5063
officeactions@norvellip.com
ATTORNEYS FOR APPLICANT
Exhibit A
Chapter 423
CME Hurricane Index Futures
42300.
SCOPE OF CHAPTER
This chapter is limited in application to CME Hurricane Index™ (“CHI”™) futures. In addition to this
chapter, CHI futures shall be subject to the general rules and regulations of the Exchange insofar
as applicable.
For purposes of this chapter, unless otherwise specified, times referred herein shall refer to and
indicate Chicago time.
42301.
CONTRACT SPECIFICATIONS
CHI values will be calculated by MDA Information Systems, Inc., using the methods described in
the CME Hurricane Index: “Scope and Definitions” document, for hurricanes making landfall in the
following locations:
•
Eastern US (Brownsville, TX to Eastport, ME)
Separate futures contracts will be listed for trading on named hurricanes that make landfall in a
specific location (e.g., Eastern US between January 1 and December 31 inclusive of a calendar
year. At the beginning of each season storm names are used from a list, starting with A and ending
with Z, maintained by the World Meteorological Organization. In the event that more than 21
named storms occur in a season, additional storms will take names from the Greek alphabet:
Alpha, Beta, Gamma, Delta, and so on.
42302.
TRADING SPECIFICATIONS
42302.A.
Trading Schedule
Futures contracts shall be scheduled for trading during such hours in such months as may be
determined by the Exchange.
42302.B.
Trading Unit
The size of the unit of trading shall be $1,000 times the respective CHI.
42302.C.
Price Increments
The minimum price fluctuation on the respective CHI futures shall be 0.1 index point, and have a
value of $100.
42302.D.
Position Limits, Exemptions, Position Accountability and Reportable Levels
The applicable position limits and/or accountability levels, in addition to the reportable levels, are
set forth in the Position Limit, Position Accountability and Reportable Level Table in the
Interpretations & Special Notices Section of Chapter 5.
A Person seeking an exemption from position limits for bona fide commercial purposes shall apply
to the Market Regulation Department on forms provided by the Exchange, and the Market
Regulation Department may grant qualified exemptions in its sole discretion.
Refer to Rule 559 for requirements concerning the aggregation of positions and allowable
exemptions from the specified position limits.
42302.E.
[Reserved]
42302.F.
[Reserved]
42302.G.
Termination of Trading
Futures trading shall terminate at 9:00 a.m. on the first Exchange Business Day that is at least five
calendar days following the last forecast/advisory issued by the National Hurricane Center (“NHC”)
for the named storm, provided that both the NHC and the Hydrometeorological Prediction Center
have stopped issuing advisories for that named storm, but in no event shall trading terminate prior
to the first Exchange Business Day that is at least five calendar days following January 1, or later
than the first Business Day that is at least five calendar days following December 31. If a particular
named storm is unused (i.e. that storm has not formed), trading shall terminate at 9:00 a.m. on the
first Exchange Business Day that is at least five calendar days following December 31.
42302.H.
[Reserved]
42302.I
[Reserved]
© Copyright Chicago Mercantile Exchange, Inc. All rights reserved.
Page 1 of 2
42303.
SETTLEMENT PROCEDURES
42303.A.
Final Settlement Price
All futures contracts remaining open at the termination of trading shall be settled using the
respective CHI final value reported by MDA Information Systems, Inc. for that named storm, using
the methodology in effect on that date and the NHC data from the Public Advisories issued through
the life of the named storm.
For example, on August 30, 2005, the last NHC Advisory on Hurricane Katrina was issued;
therefore on September 6, 2005, the Eastern US contract for Hurricane Katrina would have been
settled at 20.4 CHI index points, using data from the NHC’s Hurricane Katrina Advisories Number
9 (Florida landfall, CHI = 1.4) and Number 26A (Louisiana landfall, CHI = 19.0).
42303.B.
Final Settlement
Clearing members holding open positions in a CHI futures contract at the termination of trading in
that contract shall make payment to or receive payment from the Clearing House in accordance
with normal variation performance bond procedures based on a settlement price equal to the final
settlement price.
42304.
[RESERVED]
42305.-06. [RESERVED]
(End Chapter 423)
INTERPRETATIONS AND SPECIAL NOTICES
RELATING TO CHAPTER 423
LIMITATION OF LIABILITY AND DISCLAIMER
MDA Information Systems, Inc. (“MDA”, formerly “Earth Sat”) makes no warranty, express or implied, as
to the results to be obtained by any person or any entity from the use of the Data in connection with the
trading of futures contracts, options on futures contracts or any other use. MDA makes no express or
implied warranties, and expressly disclaims all warranties of merchantability or fitness for a particular
purpose or use with respect to the CHI. Without limiting any of the foregoing, in no event shall MDA
have any liability for any special, punitive, indirect, or consequential damages (including lost profits),
even if notified of the possibility of such damages.
© Copyright Chicago Mercantile Exchange, Inc. All rights reserved.
Page 2 of 2
Chapter 423A
Options on CME Hurricane Index Futures
423A00.
SCOPE OF CHAPTER
This chapter is limited in application to trading in put and call options on CME Hurricane Index™
(“CHI”™) futures. In addition to this chapter, options on CHI futures shall be subject to the general
rules and regulations of the Exchange insofar as applicable.
For purposes of this chapter, unless otherwise specified, times referred herein shall refer to and
indicate Chicago time.
423A01.
OPTIONS CHARACTERISTICS
423A01.A.
Contract Months and Trading Hours
Options contracts shall be listed for such contract months and scheduled for trading during such
hours as may be determined by the Exchange.
423A01.B. Trading Unit
The trading unit shall be an option to buy, in the case of the call, or to sell, in the case of the put,
one respective CHI futures contract as specified in Chapter 423.
423A01.C. Minimum Fluctuations
The price of an option shall be quoted in terms of the respective CHI. Each index point represents
$1,000. For example, a quote of 2 index points represents $2,000. The minimum fluctuation shall
be 0.1 CHI (also known as one tick), equal to $100.
423A01.D. [Reserved]
423A01.E. Exercise Prices
Exercise prices shall be stated in terms of the respective CHI futures contract. Eligible exercise
prices shall be at intervals of 1 index point (e.g., 10, 11, 12, etc.).
At the commencement of option trading in a contract month, the eligible put and call options are at
intervals of 1 index point in a range of 0 to 30 index points. New options may be listed for trading
up to and including the termination of trading.
The Exchange may modify the provisions governing the establishment of exercise prices as it
deems appropriate.
423A01.F. Position Limits, Exemptions, Position Accountability and Reportable Levels
The applicable position limits and/or accountability levels, in addition to the reportable levels, are
set forth in the Position Limit, Position Accountability and Reportable Level Table in the
Interpretations & Special Notices Section of Chapter 5.
A Person seeking an exemption from position limits for bona fide commercial purposes shall apply
to the Market Regulation Department on forms provided by the Exchange, and the Market
Regulation Department may grant qualified exemptions in its sole discretion.
Refer to Rule 559 for requirements concerning the aggregation of positions and allowable
exemptions from the specified position limits.
423A01.G. [Reserved]
423A01.H. [Reserved]
423A01.I.
Termination of Trading
Options trading shall terminate on the same date and time as the underlying futures contract.
423A01.J. [Reserved]
423A02.
EXERCISE AND ASSIGNMENT
In addition to the applicable procedures and requirements of Chapter 7, the following shall apply to
the exercise of CHI options.
423A02.A. Exercise of Option by Buyer
An option may be exercised by the buyer on any Business Day the option is traded. Exercise of an
option is accomplished by the clearing member representing the buyer presenting an Exercise
Notice to the Clearing House by 7:00 p.m. on the day of exercise.
© Copyright Chicago Mercantile Exchange, Inc. All rights reserved.
Page 1 of 2
An option that is in the money and has not been liquidated prior to the termination of trading shall,
in the absence of contrary instructions delivered to the Clearing House by 7:00 p.m. on the day of
expiration by the clearing member representing the option buyer, be exercised automatically.
423A02.B. Assignment
Exercise notices accepted by the Clearing House shall be assigned through a process of random
selection to clearing members with open short positions in the same series. A clearing member to
which an exercise notice is assigned shall be notified thereof as soon as practicable after such
notice is assigned by the Clearing House, but not later than 45 minutes before the opening of
Regular Trading Hours in the underlying futures contract on the following Business Day.
The clearing member assigned an exercise notice shall be assigned a short position in the
underlying futures contract if a call is exercised or a long position if a put is exercised. The clearing
member representing the option buyer shall be assigned a long position in the underlying futures
contract if a call is exercised and a short position if a put is exercised.
All such futures positions shall be assigned at a price equal to the exercise price of the option and
shall be marked to market in accordance with Rule 814 on the Trading Day of acceptance by the
Clearing House of the exercise notice.
423A03.
[RESERVED]
(End Chapter 423A)
INTERPRETATIONS AND SPECIAL NOTICES
RELATING TO CHAPTER 423A
LIMITATION OF LIABILITY AND DISCLAIMER
MDA Information Systems, Inc. (“MDA”, formerly “Earth Sat”) makes no warranty, express or implied, as
to the results to be obtained by any person or any entity from the use of the Data in connection with the
trading of futures contracts, options on futures contracts or any other use. MDA makes no express or
implied warranties, and expressly disclaims all warranties of merchantability or fitness for a particular
purpose or use with respect to the CHI. Without limiting any of the foregoing, in no event shall MDA have
any liability for any special, punitive, indirect, or consequential damages (including lost profits), even if
notified of the possibility of such damages.
© Copyright Chicago Mercantile Exchange, Inc. All rights reserved.
Page 2 of 2
Chapter 427
CME Hurricane Index Seasonal Futures
42700.
SCOPE OF CHAPTER
This chapter is limited in application to CME Hurricane Index™ (“CHI”™) Seasonal futures.
In addition to this chapter, CHI Seasonal futures shall be subject to the general rules and
regulations of the Exchange insofar as applicable.
For purposes of this chapter, unless otherwise specified, times referred herein shall refer to
and indicate Chicago time.
42701.
CONTRACT SPECIFICATIONS
CHI Seasonal values will be calculated by MDA Information Systems, Inc., using the methods
described in the “CME Hurricane Index: Scope and Definitions” document, for hurricanes
making landfall in the following locations:
•
Gulf Coast (Brownsville, TX to AL/FL Border)
•
Florida (AL/FL Border to Fernandina Beach, FL)
•
Southern Atlantic Coast (Fernandina Beach, FL to NC/VA Border)
•
Northern Atlantic Coast (NC/VA Border to Eastport, ME)
•
Eastern US (Brownsville, TX to Eastport, ME)
•
Gulf + Florida (Brownsville, TX to Fernandina Beach, FL)
•
Florida Gold Coast (Card Sound Bridge, FL to Jupiter Inlet, FL)
•
Florida + Southern Atlantic + Northern Atlantic (AL/FL Border to Eastport, ME)
Separate futures contracts will be listed for trading on the accumulated CHI final settlement
values for all hurricanes that make landfall in a specific location (e.g., Gulf Coast) between
January 1 and December 31 inclusive of a calendar year.
42702.
TRADING SPECIFICATIONS
42702.A.
Trading Schedule
Futures contracts shall be scheduled for trading during such hours in such months as may be
determined by the Exchange.
42702.B.
Trading Unit
The size of the unit of trading shall be $1,000 times the respective CHI Seasonal total.
42702.C.
Price Increments
The minimum price fluctuation on the respective CHI Seasonal futures shall be 0.1 index point,
and have a value of $100.
42702.D.
Position Limits, Exemptions, Position Accountability and Reportable
Levels
The applicable position limits and/or accountability levels, in addition to the reportable levels,
are set forth in the Position Limit, Position Accountability and Reportable Level Table in the
Interpretations & Special Notices Section of Chapter 5.
A Person seeking an exemption from position limits for bona fide commercial purposes shall
apply to the Market Regulation Department on forms provided by the Exchange, and the
Market Regulation Department may grant qualified exemptions in its sole discretion.
Refer to Rule 559 for requirements concerning the aggregation of positions and allowable
exemptions from the specified position limits.
42702.E.
[Reserved]
42702.F.
[Reserved]
42702.G.
Termination of Trading
Futures trading shall terminate at 9:00 a.m. on the first Exchange Business Day that is at least
five calendar days following December 31.
42702.H.
[Reserved]
© Copyright Chicago Mercantile Exchange, Inc. All rights reserved.
Page 1 of 2
42702.I.
42703.
[Reserved]
SETTLEMENT PROCEDURES
42703.A.
Final Settlement Price
All futures contracts remaining open at the termination of trading shall be settled using the
respective CHI Seasonal final value reported by MDA Information Systems, Inc.,, using the
methodology in effect on that date. For example, on January 5, 2006, the 2005 Gulf Coast
Seasonal contract would have been settled at 28.9 CHI index points.
42703.B.
Final Settlement
Clearing members holding open positions in a CHI Seasonal futures contract at the termination
of trading in that contract shall make payment to or receive payment from the Clearing House
in accordance with normal variation performance bond procedures based on a settlement price
equal to the final settlement price.
42704.
[RESERVED]
42705.-06. [RESERVED]
(End Chapter 427)
INTERPRETATIONS AND SPECIAL NOTICES
RELATING TO CHAPTER 427
LIMITATION OF LIABILITY AND DISCLAIMER
MDA Information Systems, Inc. (“MDA”, formerly “Earth Sat”) makes no warranty, express or
implied, as to the results to be obtained by any person or any entity from the use of the Data in
connection with the trading of futures contracts, options on futures contracts or any other use.
MDA makes no express or implied warranties, and expressly disclaims all warranties of
merchantability or fitness for a particular purpose or use with respect to the CHI. Without limiting
any of the foregoing, in no event shall MDA have any liability for any special, punitive, indirect, or
consequential damages (including lost profits), even if notified of the possibility of such damages.
© Copyright Chicago Mercantile Exchange, Inc. All rights reserved.
Page 2 of 2
Chapter 428
CME Hurricane Index Seasonal Maximum Futures
42800.
SCOPE OF CHAPTER
This chapter is limited in application to CME Hurricane Index ™ (“CHI”™) Seasonal Maximum
futures. In addition to this chapter, CHI Seasonal Maximum futures shall be subject to the
general rules and regulations of the Exchange insofar as applicable.
For purposes of this chapter, unless otherwise specified, times referred herein shall refer to
and indicate Chicago time.
42801.
CONTRACT SPECIFICATIONS
CHI Seasonal Maximum values will be calculated by MDA Information Systems,
Inc., using the methods described in the “CME Hurricane Index: Scope and Definitions”
document, for hurricanes making landfall in the following locations:
•
Gulf Coast (Brownsville, TX to AL/FL Border)
•
Florida (AL/FL Border to Fernandina Beach, FL)
•
Southern Atlantic Coast (Fernandina Beach, FL to NC/VA Border)
•
Northern Atlantic Coast (NC/VA Border to Eastport, ME)
•
Eastern US (Brownsville, TX to Eastport, ME)
•
Gulf + Florida (Brownsville, TX to Fernandina Beach, FL)
•
Florida Gold Coast (Card Sound Bridge, FL to Jupiter Inlet, FL)
•
Florida + Southern Atlantic + Northern Atlantic (AL/FL Border to Eastport, ME)
Separate futures contracts will be listed for trading on the maximum CHI final settlement value
for hurricanes that make landfall in a specific location (e.g., Gulf Coast) between January 1
and December 31 inclusive of a calendar year.
42802.
TRADING SPECIFICATIONS
42802.A.
Trading Schedule
Futures contracts shall be scheduled for trading during such hours in such months as may be
determined by the Exchange.
42802.B.
Trading Unit
The size of the unit of trading shall be $1,000 times the respective CHI.
42802.C.
Price Increments
The minimum price fluctuation on the respective CHI seasonal maximum futures shall be 0.1
index point, and have a value of $100.
42802.D.
Position Limits, Exemptions, Position Accountability and Reportable
Levels
The applicable position limits and/or accountability levels, in addition to the reportable levels,
are set forth in the Position Limit, Position Accountability and Reportable Level Table in the
Interpretations & Special Notices Section of Chapter 5.
A Person seeking an exemption from position limits for bona fide commercial purposes shall
apply to the Market Regulation Department on forms provided by the Exchange, and the
Market Regulation Department may grant qualified exemptions in its sole discretion.
Refer to Rule 559 for requirements concerning the aggregation of positions and allowable
exemptions from the specified position limits.
42802.E.
[Reserved]
42802.F.
[Reserved]
42802.G.
Termination of Trading
Futures trading shall terminate at 9:00 a.m. on the first Exchange Business Day that is at least
five calendar days following December 31.
© Copyright Chicago Mercantile Exchange, Inc. All rights reserved.
Page 1 of 2
42802.H.
42802.I.
42803.
[Reserved]
[Reserved]
SETTLEMENT PROCEDURES
42803.A.
Final Settlement Price
All futures contracts remaining open at the termination of trading shall be settled using the
respective CHI Seasonal Maximum final value reported by MDA Information Systems, Inc.,,
using the methodology in effect on that date. For example, on January 5, 2006, the 2005 Gulf
Coast Seasonal Maximum contract would have been settled at 19.0 CHI index points.
42803.B.
Final Settlement
Clearing members holding open positions in a CHI Seasonal Maximum futures contract at the
termination of trading in that contract shall make payment to or receive payment from the
Clearing House in accordance with normal variation performance bond procedures based on a
settlement price equal to the final settlement price.
42804.
[RESERVED]
42805.-06. [RESERVED]
(End Chapter 428)
INTERPRETATIONS AND SPECIAL NOTICES
RELATING TO CHAPTER 428
LIMITATION OF LIABILITY AND DISCLAIMER
MDA Information Systems, Inc. (“MDA”, formerly “Earth Sat”) makes no warranty, express or
implied, as to the results to be obtained by any person or any entity from the use of the Data in
connection with the trading of futures contracts, options on futures contracts or any other use.
MDA makes no express or implied warranties, and expressly disclaims all warranties of
merchantability or fitness for a particular purpose or use with respect to the CHI. Without limiting
any of the foregoing, in no event shall MDA have any liability for any special, punitive, indirect, or
consequential damages (including lost profits), even if notified of the possibility of such damages.
© Copyright Chicago Mercantile Exchange, Inc. All rights reserved.
Page 2 of 2
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
U.S. APPLICATION SERIAL NO. 77199918
*77199918*
MARK: CHI
CORRESPONDENT ADDRESS:
TATYANA V GILLES
NORVELL IP LLC
GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/trademarks/index.jsp
1776 ASH STREET
NORTHFIELD, IL 60093
TTAB INFORMATION:
http://www.uspto.gov/trademarks/process/appeal/index.jsp
APPLICANT: CHICAGO MERCANTILE EXCHANGE INC.
CORRESPONDENT’S REFERENCE/DOCKET NO:
13271-364
CORRESPONDENT E-MAIL ADDRESS:
officeactions@norvellip.com
EXAMINING ATTORNEY’S APPEAL BRIEF
The applicant has appealed the trademark examining attorney’s refusal to register the service mark
“CHI” on the grounds that it identifies a process or system, and that it does not function as a service
mark to identify and distinguish applicant’s recited services from those of others and indicate the source
of those services. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§10510-1053, 1127. The refusal on
the ground that the mark identifies a process or system is withdrawn. The remaining issue on appeal is
that the mark fails to function as a service mark to identify and distinguish applicant’s recited services
from those of others and indicate the source of those services.
FACTS
Following a refusal under Section 2d of the Trademark Act that the applicant has overcome, the mark
was published for opposition, and a statement of use provided. The statement of use was refused on
the ground that the mark identifies a process or system, and it does not function as a service mark to
identify and distinguish applicant’s services from those of others and indicate the source of those
services. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§10510-1053, 1127. Request for
reconsideration was denied because the request failed to provide specimens that showed use of the
mark as a source identifier for the services in the application, and because the mark was used to identify
a system or process. The refusal based on use of the mark to identify a process or system is withdrawn
in deference to the applicant’s registration of the same mark for indexing services. The issue remaining
on appeal is whether the mark serves as a service mark to identify and distinguish the applicant’s service
from those of others and to indicate the source of those services.
ARGUMENT
FAILURE TO FUNCTION AS SERVICE MARK FOR RECITED SERVICES
Registration was refused because the applied-for mark, as used on the specimen of record, does not
function as a service mark to identify and distinguish applicant’s services from those of others and to
indicate the source of applicant’s recited services. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C.
§§1051-1053, 1127; see In re Moody’s Investors Serv., Inc., 13 USPQ2d 2043 (TTAB 1989); In re The
Signal Cos., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP
§§904.07(b), 1301.02 et seq. The specimen of record, along with any other relevant evidence of record,
is reviewed to determine whether an applied-for mark is being used as a service mark. See In re Volvo
Cars of N. Am., Inc., 46 USPQ2d 1455, 1458 (TTAB 1998). A designation cannot be registered unless
purchasers would be likely to regard it as a source-indicator for the services. Id.; see In re Moody’s
Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).
The applicant characterizes the issue as whether the specimens show use of the proposed “CHI” mark in
connection with the futures and options contracts related to hurricanes. The examiner would agree that
the mark, “CHI”, is used in connection with the applicant's futures and options contracts in that the mark
is used on indexes used for valuation of futures and option contracts. This is not the issue for which
registration was refused.
The mark is not used in the specimens of record to identify the source of the applicant's “investment
services, namely, providing futures, option contracts related to hurricanes for trading on an exchange”
(emphasis added) and distinguish the services from those of others. The characterization of the services
and whether the mark used on the specimens is used to indicate the source of the services recited in the
application is at issue in this case.
The “CHI” mark is consistently used in the specimens of record to identify an index used in the valuation
of investment contracts. In telephonic conversations with the applicant, the examining attorney noted
that the applicant's use of the acronym CME (a different mark from the mark at issue) on the applicant’s
specimens is consistent with a mark used as a source identifier for the applicant's investment services.
The examiner encouraged the applicant to seek examples of the “CHI” mark used in a similar manner to
identify the source of the investment services rather than used to specifically reference the index used in
valuation of the applicant’s investment contracts. It is noted that during the prosecution of this
application, the applicant sought registration for “CHI” used with the indexing services referenced by the
examining attorney in telephonic conversations. It is also noted that the “CHI” mark registered in the
later filed application for the services of “compiling, proving and updating a financial index measuring
potential damage from a hurricane" (emphasis added). It is also noted that the specimens provided for
the “CHI” registered mark are identical to the specimens provided in this application in which the
specimens are refused for failing to serve as source identifying indicia for the applicant's investment
services.
The applicant argues that use of the TM symbol signals to third parties that the applicant claims use of
the term “CHI” as a mark. That is not at issue. The issue is whether the mark is used to identify the
source of the particular services recited in this application. The applicant argues that its activities
function as a service. The examining attorney is in agreement that the recited activities are services, and
that the record supports the provision of these services in trade, and has not raised this as an issue in
the prosecution of this application. Clearly, the specimens reflect that the applicant is rendering the
services in the application. At issue is whether the “CHI” mark serves to indicate the source of the
investment services. The examiner does not dispute that a mark may be used to identify a process as
well as a service, and this is evidenced by the applicant’s U.S. Registration No. 4315763 for use with
indexing services.
The specimens of record (and discussed in the applicant’s Brief) include a reference to “CHI-Cat-In-A-Box
- Galveston-Mobile” followed by a geographic reference. In this case, the proposed mark, “CHI” does
not match the term CHI-Cat-In-A-Box, and for that reason is not acceptable to show use of the mark in
connection with the services. Furthermore, it is not clear that the “CHI-Cat-In-A-Box - GalvestonMobile” is the name of a futures or futures option contract. 37 C.F.R. §2.51(a); TMEP §807.12(a). The
second specimen referenced in the applicant’s brief (and earlier made of record) states “The CME
Hurricane Index (CHI) was developed to provide a quick and easy–to calculate estimate of hurricane
damage and is used by all of our Hurricane futures and option on futures contracts.” This is a reference
to the indexing services used to establish the value of the futures and options” (emphasis added by the
examiner). The third specimen referenced in the applicant’s brief states “This high level of detail and
responsiveness, plus the ability to update frequently using publicly available data, make the CHI an ideal
choice as the basis for the suite of hurricane futures, options, and binary contracts traded at CME.”
Again, the reference to “the basis” is a reference to the means of determining the risk related value of
the hurricane related contracts. The applicant’s specimens of record are all found unacceptable for the
same reasons as those referenced herein.
While the examiner does not dispute that the “CHI” mark is used to identify both a process and a
service, it is used to identify the indexing process and services, and not to identify the source of the
investment services. The mark in this application appears to be properly registered for the services with
which it is used in U.S. Registration No. 4315763. In summation, the specimens of record do not show
use of the mark to identify the source of the applicant’s investment services, namely providing futures
[and] options contracts related to hurricanes for trading on an exchange.
CONCLUSION
For the foregoing reasons, the refusal to register on the basis of Sections 1, 2, 3, and 45 of the
Trademark Act, 15 U.S.C. §§10510-1053, 1127, for the reason that the specimens of record fail to
function to identify the source of the applicant’s services for which registration is sought, should be
affirmed.
Respectfully submitted,
/Linda A. Powell/
Linda A. Powell
Examining Attorney
L.O. 106 United States Patent and Trademark Office
571-272-9327
linda.powelll@uspto.gov
Mary I. Sparrow
Managing Attorney
Law Office 106
Table of Contents
I.
INTRODUCTION..................................................................................................................... 1
II. BACKGROUND FACTS.......................................................................................................... 2
A. Procedural History for Applicant’s Mark. ........................................................................... 2
B. Basis for the Examining Attorney’s Position. ..................................................................... 3
III. ARGUMENT............................................................................................................................ 4
A. Background Information Regarding Applicant’s Services. ................................................ 4
B. Applicant’s Activities Function As A Service. ................................................................... 5
C. Applicant’s Mark Is the Subject of a U.S. Registration Covering Index Services .............. 7
D. Applicant’s Mark is Used In Connection With a Specific Futures Contract ....................... 8
a. The Specimens Of Record Show Use Of The Mark As A Service Mark And Not As A
Process or System. ........................................................................................................ 8
b. The Board’s Precedent Supports Reversal of Examining Attorney’s Refusal ........... 10
E. The Specimens Of Record Show Direct Association Between The Offer Of Applicant’s
Services And The Mark. ........................................................................................................ 12
F. Board Should Defer to Applicant on Submission of Specimens and Any Doubt on the
Issue of Acceptability of Specimens Should Be Resolved in Favor of Applicant .................. 13
G. The Examining Attorney’s Case Law Fails to Support Her Position................................ 14
IV. CONCLUSION ...................................................................................................................... 16
i
Table of Authorities
Cases
In re Betz Paperchem, Inc., 222 USPQ 89, 90 (T.T.A.B. 1984) .................................................... 6
In Re Btio, Ser. No. 75/712,224, 2001 WL 873280 (T.T.A.B. 2001) ........................................... 14
In Re Caldwell Tanks, Inc., Ser. No. 75/672,03, 2002 WL 376688 (T.T.A.B. 2002) ......... 7, 10, 11
In re Hughes Aircraft Co., 222 USPQ 263 (T.T.A.B. 1984) ................................................... 14, 15
In Re Metriplex Inc., 23 U.S.P.Q.2d 1315, 1992 WL 169149 (T.T.A.B. 1992) ............................ 13
In Re Printco., Inc., Ser. No. 78155673, 2006 WL 2066578 (T.T.A.B 2006) .................... 6, 12, 13
In re Ralph Mantia Inc., 54 USPQ2d 1284 (T.T.A.B. 2000) ........................................................ 13
In re Red Robin Enterprises, Inc., 222 USPQ 911 (T.T.A.B. 1984) ............................................ 14
In Re Renaissance Energy, LLC, Ser. No. 78084358, 2007 WL 1580019 (T.T.A.B. 2007) ... 6, 12
In Re Solutions Now, 1999 WL 670730 (T.T.A.B. 1999) ........................................................ 8, 11
In re Stafford Printers, Inc., 153 USPQ 428, 429 (T.T.A.B. 1967) .......................................... 7, 11
In re Universal Oil Prods. Co., 476 F.2d 653 (C.C.P.A. 1973) .................................................... 14
Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305, 318 (T.T.A.B. 1979) .... 7, 14,
15
Statutes
Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127 .................................. 1, 2
Other Authorities
TMEP §1301.01(a)........................................................................................................................ 5
TMEP §1301.02(e)........................................................................................................................ 4
TMEP §1301.04 .......................................................................................................................... 13
ii
I.
INTRODUCTION
Applicant, Chicago Mercantile Exchange Inc., by its attorneys, hereby appeals the final
decision of the USPTO Examining Attorney refusing registration of the mark CHI (the “Mark” or
“CHI Mark”). This sole issue in dispute in this appeal is whether the specimens provided by
Applicant show use of CHI Mark in connection with the futures and options contracts related to
hurricanes. The Examining Attorney wrongly believes the specimens do not support registration
because the specimens merely identify a process or system and do not show use of a service
mark to identify and distinguish Applicant’s services from those of others. The record does not
support this conclusion. The specimens provided during prosecution of this application show
use of the CHI Mark in connection with an investment service, namely futures and options
contracts related to hurricanes. To illustrate this point, below is an excerpt from Applicant’s
specimen submitted on April 5, 2013 that shows use of the CHI mark in connection with a
specific futures contract related to hurricanes. There is no better specimen.
For the following reasons, the Examining Attorney’s refusal is improper and unsupported by the
record:
First, it is undisputed that the Applicant is actually rendering services, namely, futures
and options contracts related to hurricanes.
Second, Examining Attorney’s claimed process is an index that is already the subject of
a U.S. registration, specifically, the CHI Mark is registered in connection with a hurricane index,
which confirms that the mark functions as a service mark. See Reg. No. 4,315,763.
1
Third, the CHI Mark is clearly used in connection with a specific futures contract and
Applicant supplied sufficient specimens to evidence such use.
Fourth, the Trademark Trial and Appeal Board (“TTAB” or “Board”) has repeatedly held
that the standards for specimens for service marks are relaxed and any doubt on the issue of
acceptability of specimens should be resolved in favor of applicant.
Fifth, the Examining Attorneys’ own case law fails to support her position and mandates
reversal of the refusal.
Accordingly, the mark is registrable as a service mark and Applicant requests that the
Board reverse the Examining Attorney’s decision, accept the specimens submitted by Applicant,
and allow the Mark to proceed to the registration.
II.
BACKGROUND FACTS
A. Procedural History for Applicant’s Mark.
Applicant filed its application to register the mark CHI on June 7, 2007, based on an
intent to use the Mark in commerce under Section 1(b) in connection with “investment services,
namely, providing futures, options contracts related to hurricanes for trading on an exchange,”
as amended, in International Class 36 (“Services”). On August 16, 2011, the application was
allowed and on February 7, 2012, Applicant filed its Statement of Use attaching a specimen
showing use of the CHI Mark. On March 8, 2012, the Examining Attorney issued an office
action refusing registration of the Mark arguing that the mark, as used on the specimen of
record, merely identified a process or system, and did not function as a service mark to identify
and distinguish Applicant’s Services from those of others and to indicate the source of
Applicant’s Services. 15 U.S.C. §§1051-1053, 1127.
In response, Applicant submitted a substitute specimen showing the use of the CHI Mark
in connection with the applied-for Services on September 7, 2012. The Examining Attorney,
however, issued her Final Refusal on October 5, 2012, maintaining her original refusal on the
basis that the second specimen also showed use of the Mark only to identify a process or
2
system and not as a source identifier for the Services. On April 5, 2013, Applicant filed a
Request for Reconsideration with the Examining Attorney submitting several substitute
specimens. Also, on April 5, 2013, Applicant filed its Notice of Appeal and requested that this
proceeding be suspended while the Request for Reconsideration was pending. Ultimately, the
Request for Reconsideration was denied on May 22, 2013 for the same reasons, and the
present appeal was resumed. Subsequently, Applicant filed several requests for extensions of
time to file its appeal brief, which were approved by the Board. Applicant now submits its
substantive arguments in support of this appeal.
B. Basis for the Examining Attorney’s Position.
The Examining Attorney has refused registration of the CHI Mark because, in her
opinion, the Mark, “as used on the specimen of record, merely identifies a process or system”
and “does not also function as a service mark to identify and distinguish Applicant’s services
from those of others and to indicate the source of those services.” Office Action of Oct. 5, 2012.
Instead, the Examining Attorney believes that the Mark is used to reference a numerical
measure of potential damage from a hurricane, an index of that measure, and not to identify the
source of the provision of investment services. Examining Attorney further stated that while the
index appears to be used to calculate the value of futures and options contracts, it is not used in
the provided specimens as the source identifier for the provision of the investment contracts.
The Examining Attorney ignores the fact that Applicant already owns a U.S. registration for the
CHI mark covering “compiling, providing and updating a financial index measuring potential
damage from a hurricane,” which establishes that the mark functions as a service mark and is
more than just a process, but the index itself is a separate service. Despite Applicant submitting
multiple substitute specimens showing use of the Mark in connection with investment contracts
such as futures contracts, the Examining Attorney maintained her refusal and ignored the
evidence of use of the Mark as a source identifier on the specimens of record. This conclusion
is flawed.
3
III.
ARGUMENT
A. Background Information Regarding Applicant’s Services.
As the Examining Attorney properly noted, Trademark Manual of Examining Procedure
(“TMEP”) §1301.02(e) provides that “[i]n determining whether a specimen is acceptable
evidence of service mark use, the examining attorney may consider applicant’s explanations as
to how the specimen is used, along with any other available evidence in the record that shows
how the mark is actually used.” TMEP §1301.02(e).
In its Request for Reconsideration,
Applicant supplied this information to assist the Examining Attorney in understanding Applicant’s
business and the nature of the services offered. This background information is particularly
relevant because it explains that Applicant provides two core types of services, among others,
(1) financial trading services; and (2) financial information services. Both of these categories
are at issue in this issue because the CHI Mark is used for both financial trading services and
financial information services. Applicant briefly summarizes this information below
Applicant is a worldwide leader in the financial industry and part of CME Group Inc.,
which is the world’s largest and most diverse financial derivatives marketplace.
Req. for
Reconsideration, April 5, 2013. Customers rely upon Applicant’s services for their financial
exchange trading, investment, risk management, and financial information services. Applicant’s
services are defined into two core investment services: financial trading services and financial
information services.
Financial trading services relate to the trading of financial products
through an exchange or over-the-counter platform, including the matching, processing and
clearing of those trades. Financial information services involve the provision of financial market
data services and analysis, including real-time and historical information and financial indexes.
These are separate and distinct services offered by Applicant and may be used by different
customers for different reasons.
The key financial products traded on Applicant’s exchange are futures and options
contracts and these contracts are offered in a wide range of asset classes, such as metals,
4
commodities, foreign exchange, energy, equity indexes and weather products. For example,
Applicant’s weather futures and options contracts allow customers to transfer risk associated
with adverse weather events to the capital markets and increase their overall capacity to
recover from the damage. The services provided under the CHI Mark at issue in this appeal are
actually part of the hurricane futures and options contracts traded at Applicant’s exchange.
These contracts are based, in part, on numerical measures of the destructive potential of a
hurricane. Simply put, Applicant provides investment services, namely, the futures and options
contracts related to hurricanes, and Applicant uses the CHI Mark as a source identifier for these
services. Applicant’s target customers include hedge funds, insurers and reinsurers, energy
companies, utility companies, hotel corporations and other commercial enterprises that might be
affected by hurricanes. This service can be a critical component of a customer’s risk
management in the investment process.
Finally, Applicant regularly uses the TM symbol next to the CHI Mark, which signals to
third parties that Applicant claims trademark rights in the mark. An example of such usage is
shown in Exhibit A, which was submitted on April 5, 2013 in connection with Applicant’s
Request for Reconsideration after Final Action.
B. Applicant’s Activities Function As A Service.
Section 1301.01(a) of the TMEP states that to function as a service, an activity must be:
(1) a real activity and not a mere idea, process or concept; (2) performed to the order of, or for
the benefit of someone other than the applicant; and (3) qualitatively differ from anything
necessarily done in connection with the sale of the applicant’s goods or performance of another
services, i.e., not merely incidental or necessary to the applicant’s larger business. See TMEP
§1301.01(a). In Re Renaissance Energy, LLC, Ser. No. 78084358, 2007 WL 1580019 (T.T.A.B.
5
2007)1; In re Betz Paperchem, Inc., 222 USPQ 89, 90 (T.T.A.B. 1984). The Examining Attorney
cannot and does not dispute Applicant is rendering services.
As part of this analysis, the Board examines the specimens to show some direct
association between the offer of services and the mark sought to be registered, i.e., that the
mark is used in such a manner that it would be readily perceived as identifying the source of
such services. For example, in In re Renaissance Energy, the Board reversed the Examining
Attorney’s refusal of the specimen because the original specimen submitted by the applicant
showed service mark use of the mark LINK AND SYNC based upon the position, prominence
and size of the mark and use of the mark LINK AND SYNC in connection with the word
“operation,” which denotes an activity. In Re Renaissance Energy, LLC, 2007 WL 1580019, at
*2. (emphasis added). See also In re Betz Paperchem, Inc., 222 USPQ at 91 (the Board found
specimens showed the term sought to be registered used to identify the applicant’s activities;
thus, the use of the term as a service mark has been demonstrated). Similarly, the Board in In
re Printco found the specimen of record created a direct association between applicant's
ENKLAVVOICE mark and the services specified in the application and reversed the Examining
Attorney’s refusal. In Re Printco., Inc., Ser. No. 78155673, 2006 WL 2066578 (T.T.A.B 2006).
A sufficient reference to the services in the specimen will create this association. Id.
In the instant case, there is no dispute that Applicant is rendering investment services.
Applicant’s specimens of record all relate to investment services, namely futures and options
contracts related to hurricanes that are traded on a financial exchange. First, these are real
financial products traded by third parties to manage risk. For example, hotel companies may
purchase these contracts to manage the risk of a hurricane destroying one of their properties.
Second, Applicant’s Services are performed for the benefit of customers seeking to manage risk
1
All cases cited in Applicant’s Appeal Brief are attached as Exhibit B.
6
by trading these investment contracts, again, these services are utilized by companies as part of
their overall risk management. Finally, Applicant’s Services are qualitatively different from and
not merely incidental to Applicant’s larger business of providing financial trading services.
Applicant could operate the exchange without these specific products.
The specimens establish that is rendering services and this cannot be disputed by the
Examining Attorney. As argued below, the specimens further show an association between
these services and use of the CHI Mark.
C. Applicant’s Mark Is the Subject of a U.S. Registration Covering Index
Services
Examining Attorney’s own case law establishes that if a term is used to identify services,
or to identify both process and services rendered under the process, it constitutes a service
mark. Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305, 318 (T.T.A.B. 1979).
The words used on the specimen are not determinative. There is no black letter rule that a term
can be the name of a process and not function as a mark for services. In Re Caldwell Tanks,
Inc., Ser. No. 75/672,03, 2002 WL 376688, *2 (T.T.A.B. 2002). The Board has previously stated
the fact that “the term ‘process’ is used on the specimen does not ipso facto mean that an
arbitrary mark used in connection therewith designates a process and not more.”
In Re
Caldwell Tanks, Inc., 2002 WL 376688 at *2; In re Stafford Printers, Inc., 153 USPQ 428, 429
(T.T.A.B. 1967). When a process is such an intrinsic part of a service, consumers will view the
name of the process, not merely as the name of the process or system, but as a mark for the
service. In Re Caldwell Tanks, Inc., 2002 WL 376688, at *2. In the present case, the Examining
Attorney argued the process is the index calculation, which is actually a separate service offered
by Applicant and the subject of a U.S. Reg. No. 4,315,763. This proves that the CHI mark
functions as a service mark.
7
D. Applicant’s Mark is Used In Connection With a Specific Futures Contract
In the instant case, the CHI Mark is registrable because the services provided under the
CHI Mark constitute a service and are not just a process or system. The Examining Attorney
does not dispute that a mark may be used for both a process and as a source identifier. Oct. 5,
2012 Office Action. Moreover, the “process” claimed by the Examining Attorney is an actually
index used in calculating hurricane damage, and is the subject of U.S. trademark registration
(Reg. No. 4315763). Therefore, The CHI Mark constitutes a service mark and is registrable
despite the fact that the term “index” is used in conjunction with the Mark on the specimens of
record.
a. The Specimens Of Record Show Use Of The Mark As A Service Mark
And Not As A Process or System.
“To focus on applicant’s use of the word ‘process’ in lieu of the word ‘service’ incorrectly
places form over substance.” In Re Solutions Now, 1999 WL 670730, *1 (T.T.A.B. 1999).
Applicant’s Services provided under the CHI Mark constitute a service and are not a mere
process or system despite use of the word “index.” As explained above, Applicant actually offers
a CHI futures contract and the CHI service is embedded in and part of the hurricane futures and
options contracts. The mere fact that Applicant also uses the word “index” on the specimens
does not mean that the CHI service is simply a process or system for estimating hurricane
damage as opposed to an investment service. As fully explained in the preceding section, CHI
services allow customers to offset risk associated with potential damage arising from a
hurricane by trading futures or options contracts related to hurricanes on Applicant’s exchange.
Applicant could have used the term “CHI service” instead of the term “CHI index” in the
specimens, which would not have changed the essence of the Services provided under the CHI
Mark. Furthermore, the CHI service is such an intrinsic part of Applicant’s Services that
consumers view CHI, as used on the specimens, not as the name of an index used to estimate
8
hurricane damage, but as a mark for the service.
This reinforces the fact that Applicant
identifies futures contract by the mark CHI.
Even if the CHI Mark identifies the system or process for estimating hurricane damage,
the CHI Mark is still registrable as a service mark because the CHI Mark, as clearly shown on
the specimens of record, identifies both the system or process and Applicant’s investment
services rendered by means of such system or process. The CHI Mark is used in the context of
providing investment services, including as the name of a particular futures contract. See
Exhibit C. Accordingly, the CHI Mark is used in connection with and as part of providing the
investment services and is registrable as a service mark. Applicant submitted ample evidence
showing such use. Applicant details below its specimens of record.
The most relevant specimen attached as Exhibit C and submitted to the USPTO by
Applicant on April 5, 2013 is a brochure regarding Applicant’s hurricane contracts. Most
importantly, very first page of the specimen identifies list of “Seasonal Max Binary futures
contracts” and the very the first contract is a CHI branded futures contract showing clear use of
the CHI mark in connection with a specific futures contract:
The specimen attached as Exhibit D entitled “Hurricane Product Center” is a print-out
from Applicant’s website that consists of an advertisement for the CHI Mark in connection with
providing Applicant’s investment services. This second specimen states in part:
The CME Hurricane Index (CHI) was developed to provide a quick and easy-to calculate
estimate of hurricane damage and is used by all of our Hurricane futures and options on
futures contracts. (emphasis added)
9
The specimen entitled “A Detailed Overview of the CME Hurricane Index™ (CHI™)” is a
brochure describing the CHI Index. See Exhibit A. This specimen states in part:
This high level of detail and responsiveness, plus the ability to update frequently using
publicly available data, make the CHI an ideal choice as the basis for the suite of
hurricane futures, options, and binary contracts traded at CME. (emphasis added)
To emphasize this point, the specimen states the CHI Mark is the basis for the actual
investments services covered by the present Application. All of these specimens establish a
direct association between the CHI Mark and Applicant’s Services.
The specimens entitled “Weather Products CME Hurricane Index Futures and Options” and
“CME Hurricane Index (CHI) Overview” further demonstrate use of the CHI Mark in connection
with services related to “futures and options” or “futures and options contracts.” See Exhibits E
and F.
The review of Applicant’s specimens prove (1) there is a futures hurricane contract by
the name CHI, and (2) the remaining specimens of record show a direct association between
use of the Mark and the identified services.
There can be no clearer specimen or evidence of record showing use of the CHI Mark
as a source identifier for the provision of Applicant’s Services, specifically, investment services.
b. The Board’s Precedent Supports Reversal of Examining Attorney’s
Refusal
The Board should not place undue emphasis on wording used in the Applicant’s
specimens. The Board’s decision in In Re Caldwell Tanks, Inc., is instructive. 2002 WL 376688
at *2. Specifically, the Board found that “[a]lthough the specimens use the mark, in part, in
conjunction with the phrase “jump form system,” the word “system,” like “process,” does not
automatically prevent a term from functioning as a mark. Because “the construction system is
such an intrinsic part of the construction service that consumers will view STAC-4 and design,
as used on the specimens, not merely as the name of the system, but as a mark for the
10
service.” Id. The Board also stated that this is a very fact intensive process, so whether or not
a particular specimen shows use of a service mark is case specific. Id. at *2.
The Board in In Re Solutions Now, found that “applicant could have just as easily used
the word ‘service’ in lieu of the word ‘process,’” therefore applicant’s use of the word “process”
in the specimens did not mean that the mark identified a process as opposed to a service. 1999
WL 670730, at *1. This decision confirms that the Board should consider the entirety of the
record, as mere words on the specimens are not determinative.
Similarly, in this case, the CHI Mark is functioning as a mark and is registrable despite
the fact that the term “index” is used in conjunction with the Mark on the specimens of record.
Because Applicant’s CHI service is such an intrinsic part of its investment services, consumers
view the CHI Mark, as used on the specimens of record, not merely as the name of an index
used to calculate the value of futures and options contracts, but as a mark for Applicant’s
Services. Customers could easily trade these investment contracts by referring to them as a
CHI hurricane future. Using the CHI source designation, third parties would understand the
specific futures contract. Therefore, the CHI Mark refers to a service and not simply a process
or system, and is used as a source identifier. As a result, the Examining Attorney’s refusal to
register the CHI Mark should be reversed.
“A process, inter alia, is a particular method or system of doing something…By its very
meaning, the term “process” can encompass a service.” In re Stafford Printers, Inc., 153 USPQ
at 429. The key to understanding whether a term identifies only a process and is thus not
registrable, or identifies a service and a process and is thus registrable must be determined by
reviewing applicant’s specimens of use. In Re Solutions Now, 1999 WL 670730, at *1. Further,
if “applicant’s services are offered to a specialized audience, we must consider the specimens
and other literature in light of this audience.” In Re Caldwell Tanks, Inc., 2002 WL 376688, at *1.
Applicant has made of record ample evidence that demonstrates that Applicant is
rendering specific services under the Mark to a specialized audience. As explained above,
11
Applicant’s Services provided under the Mark consist of assisting its customers to offset risk
associated with potential damage arising from a hurricane by trading futures or options
contracts related to hurricanes on Applicant’s exchange. Accordingly, at a minimum, the Mark
identifies both a process or system and a service.
E. The Specimens Of Record Show Direct Association Between The Offer Of
Applicant’s Services And The Mark.
The Specimens submitted by Applicant show direct association between the offer of
Applicant’s Services and the Mark, i.e., the Mark is used in such a manner that it would be
readily perceived as identifying the source of Applicant’s Services. In Re Renaissance Energy,
LLC, 2007 WL 1580019; In re PrintCo, Inc., 2006 WL 2066578.
First, the commercial impression created by the specimens is that CHI is an activity or
service. For example, if Applicant used the term “CHI service” instead of the term “CHI index” in
the specimens, the commercial impression created by the CHI Mark would be the same. In
addition, because the Mark is used either with the designation ™, in bold font or capital letters,
the CHI Mark will be perceived as a service mark by relevant consumers.
See In Re
Renaissance Energy, LLC, 2007 WL 1580019, at *2 (“[i]f we substituted the word “Services” for
“Operation” (i.e., “Link and Sync (tm) Services”), the commercial impression engendered by the
mark would be the same (i.e., Link and Sync Business or Link and Sync Activity”). In addition,
because of the position, prominence, and size of “Link and Sync,” it will be understood to be a
service mark.”)
Second, the specimens show the Mark with reference to, or association with, Applicant’s
Services. For example, the specimens consist of advertisements that show the Mark
immediately next to the description of Applicant’s specific investment services. See, e.g.,
Exhibits C, D, E.
Therefore, the specimens of record show direct association between the offer of
Services and the Mark. See, e.g., In re PrintCo, Inc., 2006 WL 2066578, at *4 (the Board found
12
that the screen print from the applicant’s website showing the applied-for mark immediately
followed by the description of the applied-for services did not merely describe features of a
system, but described the applied-for services available by means of the applicant’s website
under the applied-for mark; thus, the specimen of record was adequate to support the use of the
mark in connection with the identified services).
A consumer viewing Applicant's specimens would readily perceive the CHI Mark as
identifying the source of Applicant's investment services that allows consumers to engage the
described investment services. As a result, Applicant's specimens create a direct association
between the CHI Mark and Applicant’s Services and the CHI Mark is registrable based on the
specimens of record.
F. Board Should Defer to Applicant on Submission of Specimens and Any
Doubt on the Issue of Acceptability of Specimens Should Be Resolved in
Favor of Applicant
The Board’s precedent is clear. “[T]he Board has been fairly flexible in accepting service
mark specimens.” In re PrintCo, Inc., 2006 WL 2066578, at *3. The reason for this approach is
simple. Service marks are intangible and not easily susceptible to proving use of a mark by
requirements of specimens. In Re Metriplex Inc., 23 U.S.P.Q.2d 1315, 1992 WL 169149, *2
(T.T.A.B. 1992). This reality is expressed by the relaxed standards set forth in the TMEP for
service marks. Id.; TMEP §1301.04. Unlike goods, applicants cannot readily tag services with
their marks. To deny registration on this basis would effectively give less protection to service
marks over trademarks, which is contrary to the law. By this reason, the Board is very flexible in
accepting service mark specimens in cases where the specimens do not refer explicitly to the
services identified in the respective applications. There are ample Board’s decisions that
demonstrate such flexibility. See, e.g., In re Ralph Mantia Inc., 54 USPQ2d 1284 (T.T.A.B.
2000) (applicant’s specimen of letterhead stationery was found acceptable even though it only
stated the word “design” and did not indicate the specific nature of applicant’s services,
commercial art design); In Re Metriplex Inc., 1992 WL 169149, at *2 (an example of a computer
13
screen display that appeared on a computer terminal in the course of applicant’s rendering of its
services was found to be an acceptable specimen even though it did not refer to the services
identified in the application); In re Red Robin Enterprises, Inc., 222 USPQ 911 (T.T.A.B. 1984)
(a photograph of a person wearing a bird costume, where asserted mark was a design of that
bird costume, for entertainment services, namely personal appearances, clowning, antics,
dance routines and charity benefits, was an acceptable specimen showing the use of the mark
in connection with the applied-for services).
Moreover, to the extent that the Board has any doubt on the question of whether the
specimens of record are acceptable to show Applicant’s use of the CHI Mark, this doubt should
be resolved in favor of Applicant. In Re Btio, Ser. No. 75/712,224, 2001 WL 873280 (T.T.A.B.
2001). As a result, the Examining Attorney’s refusal should be withdrawn.
G. The Examining Attorney’s Case Law Fails to Support Her Position.
In support of her refusal, the Examining Attorney relies upon decisions in In re Universal
Oil Prods. Co., 476 F.2d 653 (C.C.P.A. 1973), In re Hughes Aircraft Co., 222 USPQ 263
(T.T.A.B. 1984) and Liqwacon Corp., 203 USPQ 305. The decisions in In re Universal Oil Prods.
Co. and In re Hughes Aircraft Co. are clearly distinguishable from the present record and
therefore do not support the Examining Attorney’s position. Furthermore, the decision in
Liqwacon Corp. supports Applicant’s position, and not the Examining Attorney’s position.
Unlike the present situation, the applicant In re Universal Oil Prods. Co. submitted
brochures as specimens that completely failed to show any use of the PACOL and PENEX
marks in reference to PACOL or PENEX services. 476 F.2d at 654. Specifically, the Court of
Customs and Patent Appeals found no association between the marks and the offer of services.
Instead, the marks were simply used in a brochure offering to license or install certain chemical
processes. and the specimen merely described some general services and referenced a dozen
or more different names. In In re Hughes Aircraft Co., the specimens and other materials
introduced by the applicant used the term “PHOTOX” only in connection with applicant’s
14
photochemical vapor deposition process or method, and not any specific services. 222 USPQ at
265. The Board found that there was no association between applicant’s offering of services of
treating the products of others by means of photochemical vapor and the term “PHOTOX.” Id.
Neither of these situations is present here.
Unlike In re Universal Oil Prods. Co., all specimens provided by Applicant prominently
use the CHI Mark and detail Applicant’s investment services, namely, futures and options
contracts related to hurricanes for trading on an exchange. These specimens are used by
customers to understand the specific financial products offered by Applicant and evaluate these
services. In fact, these specimens are not broad company brochures, but specifically focused
on the CHI mark and Applicant’s futures and options contracts for hurricanes. As a result, there
is a direct association between the offer of services (futures or options contracts related to
hurricanes) and the CHI mark. On this basis alone, the specimens should be accepted and
refusal withdrawn.
Finally, the Board’s decision in Liqwacon Corp. supports Applicant’s position because,
similar to the present case, the mark in Liqwacon Corp. identified both a waste treatment and
disposal service and a chemical solidification process, and thus was registrable as a service.
203 USPQ at 318.
The Board came to this conclusion despite the fact that a number of
applicant’s exhibits contained reference to the mark with the word “process,” i.e., “LIQWACON
PROCESS,” “Disposal via LIQ-WA-CON Process” and similar expressions.
As argued above, Applicant has provided ample evidence and arguments to show that
the mark CHI Mark identifies both a process or system, i.e., an index, and investment services.
Examining Attorney’s focus on the word “index” is misplaced and irrelevant. The law does not
require use of the word “service” to secure a registration for service marks. Therefore, the
Examining Attorney’s case law fails to support her position and the refusal to register the CHI
Mark should be reversed.
15
IV.
CONCLUSION
Because Applicant’s CHI Mark is used in the specimens of record as the source
identifier for the provision of the Applicant’s Services, Applicant respectfully requests that the
Board reverse the Examining Attorney’s refusal to register the CHI Mark, accept the specimens
submitted by Applicant and allow the Application to proceed to the registration.
Respectfully Submitted,
CHICAGO MERCANTILE EXCHANGE INC
Dated: _October 1, 2013________
By:
/Tatyana V. Gilles/__
Joseph T. Kucala, Jr.
Tatyana V. Gilles
NORVELL IP LLC
1776 Ash Street
Northfield, Illinois 60093
Tel: 888-315-0732
Fax: 312-268-5063
officeactions@norvellip.com
Attorneys for Applicant
16
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In re Application of:
CHICAGO MERCANTILE EXCHANGE INC.
Examining Attorney:
Serial No.:
77/199,918
Linda A. Powell
Filed:
June 7, 2007
Mark:
CHI
Law Office 106
APPENDIX FOR APPLICANT’S APPEAL BRIEF IN SUPPORT OF REGISTRATION FOR
THE MARK CHI IN INTERNATIONAL CLASS 36
Exhibit
Description
A
Specimen entitled “A Detailed Overview of the CME Hurricane Index™ (CHI™)”
B
All case law cited in Applicant’s Appeal Brief
C
Specimen entitled “Weather Products CME Hurricane Index Futures and
Options” submitted on April 5, 2013
D
Specimen entitled “Hurricane Product Center”
E
Specimen entitled “Weather Products CME Hurricane Index Futures and
Options” submitted on February 7, 2012
F
Specimen entitled “CME Hurricane Index (CHI) Overview”
17
WEATHER PRODUCTS
CME Hurricane Index Futures and Options
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Overview
Market Participants
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Benefits
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š C_j_]Wj[[nfeikh[i\ehWYjkWbdWc[Z
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Contract Types
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š >khh_YWd[I[WiedWbCWn_ckc\kjkh[i
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About the Index
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cWa[j^[iYWb[b[iij^Wdefj_cWb\ehki[Xoj^[_dikhWdY[Yecckd_joWdZj^[fkXb_YWjbWh][$<eh[nWcfb["c[j[ehebe]_iji^Wl[^WZjegkWdj_\oII>I
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Wjj^[j_c[e\_jibWdZ\WbbXkjj^_iZ_Zdejfhel_Z[Wh[Wb[ij_cWj[jej^[WYjkWbf^oi_YWb_cfWYj$7dZ>khh_YWd[M_bcW_d(&&+mWiWjed[fe_dj_d_jib_\[
j^[ijhed][ijijehcedh[YehZ$>em[l[h"j^[9>?^_]^b_]^jij^WjWj_jiijhed][ij">khh_YWd[AWjh_dW^WZceh[fej[dj_Wb\ehZWcW][j^WdM_bcW"Z[if_j[_ji
bem[hm_dZif[[Z"i_dY[AWjh_dWmWiW\Whm_Z[hijehc$J^[IWöh#I_cfiediYWb[mekbZX[kdWXb[jecWa[j^_iZ_ij_dYj_edYb[Wh$
CME HurriCanE inDEX FuturEs anD OptiOns COntraCts
HURRICANE INDEX FUTURES
OPTIONS ON HURRICANE INDEX FUTURES
'"&&&j_c[ij^[h[if[Yj_l[9>?
Contract size
Quotation
9>??dZ[nFe_dji
tick size
&$'9>??dZ[nFe_dj
tick Value
&$'9>??dZ[nFe_dj3'&&n'&3'j_Ya%'"&&&
Contracts traded
Locations
7jj^[X[]_dd_d]e\[WY^i[WiedijehcdWc[iWh[ki[Z\hecWb_ij"ijWhj_d]m_j^7WdZ[dZ_d]m_j^P"cW_djW_d[ZXoj^[MehbZC[j[ehebe]_YWb
Eh]Wd_pWj_ed$?dj^[[l[djj^Wjceh[j^Wd('dWc[Z[l[djieYYkh_dWi[Wied"WZZ_j_edWbijehcim_bbjWa[dWc[i\hecj^[=h[[aWbf^WX[j0
7bf^W"8[jW"=WccW":[bjW"WdZieed
DWc[Z^khh_YWd[icWa_d]bWdZ\Wbb_dj^[;Wij[hdK$I$8hemdil_bb["JNje;Wijfehj"C;
DWc[Z^khh_YWd[ieYYkhh_d]m_j^_dj^[9>?#9Wj#?d#7#8enÄ=Wbl[ijed#CeX_b[
(area bounded by 95°30’0”W on the West, 87°30’0”W on the East, 27°30’0”N on the South, and the corresponding segment of the U.S. coastline on the North)
;l[djiX[]_dm_j^Wed[WdZ[dZim_j^Wp[he&h[fh[i[dji'&
ticker symbols
termination of
trading
>N'#>N&39>?>khh_YWd[?dZ[nijehciX[]_dd_d]m_j^j^[b[jj[hi7#@
>='#>=&39>?>khh_YWd[?dZ[nijehciX[]_dd_d]m_j^j^[b[jj[hiA#L
><'#><&39>?>khh_YWd[?dZ[nijehciX[]_dd_d]m_j^j^[b[jj[hiM#?ejW
>F'#>F&39>?9Wj#?d#7#8enÄ=Wbl[ijed#CeX_b[ijehci7#@
>I'#>I&39>?9Wj#?d#7#8enÄ=Wbl[ijed#CeX_b[ijehciA#L
>D'#>D&39>?9Wj#?d#7#8enÄ=Wbl[ijed#CeX_b[ijehciM#?ejW
JhWZ_d]i^Wbbj[hc_dWj[Wj/0&&W$c$9[djhWbJ_c[9Jedj^[Òhij;nY^Wd][Xki_d[iiZWoj^Wj_iWjb[WijjmeYWb[dZWhZWoi\ebbem_d]j^[bWij
\eh[YWij%WZl_ieho_iik[ZXoj^[D>9\ehj^[dWc[Zijehc"Xkj_dde[l[dji^WbbjhWZ_d]j[hc_dWj[fh_ehjej^[Òhij;nY^Wd][Xki_d[iiZWoj^Wj_i
Wjb[WijjmeYWb[dZWhZWoi\ebbem_d]j^[X[]_dd_d]e\j^[^khh_YWd[i[Wieded@WdkWho'$?\WfWhj_YkbWhdWc[Zijehc_ikdki[Z_$[$"j^Wjijehc^Wi
dej\ehc[Z"jhWZ_d]i^Wbbj[hc_dWj[Wj/0&&W$c$9Jedj^[Òhij;nY^Wd][Xki_d[iiZWoj^Wj_iWjb[WijjmeYWb[dZWhZWoi\ebbem_d]j^[[dZe\j^[
^khh_YWd[i[Wieded:[Y[cX[h)'$
JhWZ_d]i^Wbbj[hc_dWj[Wj/0&&W$c$9Jedj^[Òhij;nY^Wd][Xki_d[iiZWoj^Wj_iWjb[WijjmeYWb[dZWhZWoi\ebbem_d]j^[Z_ii_fWj_edeh[n_j\hec
j^[Z[i_]dWj[ZWh[We\WdWc[Z^khh_YWd["Xkj_dde[l[dji^WbbjhWZ_d]j[hc_dWj[fh_ehjej^[<_hij;nY^Wd][Xki_d[iiZWoj^Wj_iWjb[Wijjme
YWb[dZWhZWoi\ebbem_d]j^[X[]_dd_d]e\j^[^khh_YWd[i[Wieded@WdkWho'ehbWj[hj^Wdj^[ÒhijXki_d[iiZWoj^Wj_iWjb[WijjmeYWb[dZWhZWoi
\ebbem_d]:[Y[cX[h)'$?\WfWhj_YkbWhdWc[Zijehc_ikdki[Z_$[$"j^Wjijehc^WZdej\ehc[Z"jhWZ_d]i^Wbbj[hc_dWj[Wj/0&&W$c$9Jedj^[
Òhij;nY^Wd][Xki_d[iiZWoj^Wj_iWjb[WijjmeYWb[dZWhZWoi\ebbem_d]j^[[dZe\j^[^khh_YWd[i[Wieded:[Y[cX[h)'$
strike price
interval
D%7
'?dZ[nFe_dj[$]$"'&"''"'("[jY$
Exercise
D%7
7c[h_YWd#ijob[[n[hY_i[ZWdoj_c[kfjeWdZ_dYbkZ_d]bWijjhWZ_d]
ZWoBJ:
settlement
7bb\kjkh[iYedjhWYjih[cW_d_d]ef[dWjj^[j[hc_dWj_ede\jhWZ_d]
i^WbbX[i[jjb[Zki_d]j^[h[if[Yj_l[9>?ÒdWblWbk[h[fehj[ZXo
;G;97J\ehj^WjdWc[Z[l[dj
D%7
7bb\kjkh[iYedjhWYjih[cW_d_d]ef[dWjj^[j[hc_dWj_ede\jhWZ_d]
i^WbbX[i[jjb[Zki_d]j^[h[if[Yj_l[9>?#9Wj#?d#7#8enÒdWblWbk[
h[fehj[ZXo;G;97J\ehj^WjdWc[Z[l[dj"ki_d]j^[
cWn_ckcYWbYkbWj[Z9>?lWbk[m^_b[j^[^khh_YWd[_im_j^_dj^[
Z[i_]dWj[ZWh[W
position Limits
Fei_j_edWYYekdjWX_b_jo\ehfei_j_edi[nY[[Z_d]'&"&&&YedjhWYji_d
WdoYedjhWYjcedj^
Fei_j_edWYYekdjWX_b_jo\ehfei_j_edi[nY[[Z_d]'&"&&&
\kjkh[i#[gk_lWb[djYedjhWYjid[jedj^[iWc[i_Z[e\j^[cWha[j_d
WdoYedjhWYjcedj^
trading Hours
Eõ[h[Z[nYbki_l[boedj^[9C;=beX[n[b[Yjhed_YjhWZ_d]fbWj\ehc
edIkdZWoij^hek]^J^khiZWoi"+0&&f$c$Ä)0'+f$c$9Jj^[
\ebbem_d]ZWo/0&&W$c$9JBJ:
JhWZ[Zl_Wef[dekjYho_dj^[D7I:7G#'&&f_jedCedZWoi
j^hek]^<h_ZWoi".0)&W$c$Ä)0'+f$c$9J/0&&W$c$9JBJ:
Futures trading is not suitable for all investors, and involves the risk of loss. Futures are a leveraged investment, and because only a percentage of a contract’s value is required to trade, it is possible to lose more than the amount of money
deposited for a futures position. therefore, traders should only use funds that they can aford to lose without afecting their lifestyles. and only a portion of those funds should be devoted to any one trade because they cannot expect to
proit on every trade.
all references to options refer to options on futures.
the information within this brochure has been compiled by CME Group for general purposes only. CME Group assumes no responsibility for any errors or omissions. although every attempt has been made to ensure the accuracy of the
information within this brochure, CME Group assumes no responsibility for any errors or omissions. additionally, all examples in this brochure are hypothetical situations, used for explanation purposes only, and should not be considered
investment advice or the results of actual market experience.
all matters pertaining to rules and speciications herein are made subject to and are superseded by oicial CME, CBOt and CME Group rules. Current rules should be consulted in all cases concerning contract speciications.
CME Group is a trademark of CME Group inc. the Globe logo, CME, Chicago Mercantile Exchange and Globex are trademarks of Chicago Mercantile Exchange inc. CBOt and Chicago Board of trade are trademarks of the Board of trade of
the City of Chicago. nYMEX, new York Mercantile Exchange and Clearport are trademarks of new York Mercantile Exchange inc. COMEX is a trademark of Commodity Exchange inc. all other trademarks are the property of their respective
owners. Further information about CME Group and its products can be found at www.cmegroup.com.
Copyright © 2009 CME Group inc. all rights reserved.
CME HurriCanE inDEX sEasOnaL FuturEs anD OptiOns COntraCts
HURRICANE SEASONAL FUTURES
OPTIONS ON HURRICANE SEASONAL FUTURES
'"&&&j_c[ij^[i[WiedWbjejWb\ehj^[h[if[Yj_l[9>?
Contract size
Quotation
9>??dZ[nFe_dji
tick size
&$'9>??dZ[nFe_dj
tick Value
&$'9>??dZ[nFe_dj3'&&
;nfh[ii[Z_dj[hcie\j^[WYYkckbWj[Z9>?\ehWbb^khh_YWd[ij^WjeYYkhm_j^_dWif[Y_ÒYbeYWj_edX[jm[[d@WdkWho'WdZ:[Y[cX[h)'
_dYbki_l[e\WYWb[dZWho[Wh
Contracts traded
;nfh[ii[Z_dj[hcie\j^[WYYkckbWj[Z9>?#9Wj#?d#7#8enlWbk[i\ehWbb^khh_YWd[ij^WjeYYkhm_j^_dWif[Y_ÒY][e]hWf^_YWh[WX[jm[[d@WdkWho'
WdZ:[Y[cX[h)'_dYbki_l[e\WYWb[dZWho[Wh
=kb\9eWij
(Brownsville, TX to AL/FL Border)
Locations
<beh_ZW
(AL/FL Border to Fernandina Beach, FL)
Iekj^[hd7jbWdj_Y9eWij
(Fernandina Beach, FL to NC/VA Border)
Dehj^[hd7jbWdj_Y9eWij
(NC/VA Border to Eastport, ME)
;Wij[hdK$I$
(Brownsville, TX to Eastport, ME)
9>?#9Wj#?d#7#8en=Wbl[ijed#CeX_b[
(area bounded by 95°30’0”W on the West, 87°30’0”W on the East, 27°30’0”N on the South, and the corresponding segment of the U.S. coastline on the North)
>=73=kb\9eWij
ticker symbols
><73<beh_ZW
>I73Iekj^[hd7jbWdj_Y9eWij
>D73Dehj^[hd7jbWdj_Y9eWij
>N73;Wij[hdK$I$
>F739>?#9Wj#?d#7#8en=Wbl[ijed#CeX_b[
JhWZ_d]i^Wbbj[hc_dWj[Wj/0&&W$c$9Jedj^[Òhij;nY^Wd][
Xki_d[iiZWoj^Wj_iWjb[WijjmeYWb[dZWhZWoi\ebbem_d]j ^[[dZe\j^[^khh_YWd[i[Wieded:[Y[cX[h)'
termination of
trading
strike price
interval
D%7
'?dZ[nFe_dj[$]$"'&"''"'("[jY$
Exercise
D%7
7c[h_YWd#ijob[[n[hY_i[ZWdoj_c[kfjeWdZ_dYbkZ_d]BJ:
settlement
7bb\kjkh[iYedjhWYjih[cW_d_d]ef[dWjj^[j[hc_dWj_ede\jhWZ_d]
i^WbbX[i[jjb[Zki_d]j^[h[if[Yj_l[9>?ÒdWblWbk[h[fehj[ZXo
;G;97J\ehj^WjdkcX[h[Z[l[dj
D%7
7bb\kjkh[iYedjhWYjih[cW_d_d]ef[dWjj^[j[hc_dWj_ede\jhWZ_d]
i^WbbX[i[jjb[Zki_d]j^[h[if[Yj_l[9>?#9Wj#?d#7#8enÒdWblWbk[
h[fehj[ZXo;G;97J\ehj^WjdkcX[h[Z[l[dj"ki_d]j^[
cWn_ckcYWbYkbWj[Z9>?lWbk[m^_b[j^[^khh_YWd[_im_j^_dj^[
Z[i_]dWj[ZWh[W
position Limits
Fei_j_edWYYekdjWX_b_jo\ehfei_j_edi[nY[[Z_d]'&"&&&YedjhWYji_d
WdoYedjhWYjcedj^
Fei_j_edWYYekdjWX_b_jo\ehfei_j_edi[nY[[Z_d]'&"&&&
\kjkh[i#[gk_lWb[djYedjhWYjid[jedj^[iWc[i_Z[e\j^[cWha[j_d
WdoYedjhWYjcedj^
trading Hours
Eõ[h[Z[nYbki_l[boedj^[9C;=beX[n[b[Yjhed_YjhWZ_d]fbWj\ehc
edIkdZWoij^hek]^J^khiZWoi"+0&&f$c$Ä)0'+f$c$9Jj^[
\ebbem_d]ZWo/0&&W$c$9JBJ:
JhWZ[Zl_Wef[dekjYho_dj^[D7I:7G#'&&f_jedCedZWoi
j^hek]^<h_ZWoi".0)&W$c$Ä)0'+f$c$9J/0&&W$c$9JBJ:
For more information on CME Hurricane Index futures and options,
visit www.cmegroup.com/hurricane.
For real-time prices on CME Hurricane Index futures, visit www.cmegroup.com/weatherquotes.
CME HurriCanE inDEX sEasOnaL MaXiMuM
FuturEs anD OptiOns COntraCts
HURRICANE SEASONAL MAXIMUM FUTURES
OPTIONS ON HURRICANE SEASONAL MAXIMUM FUTURES
'"&&&j_c[ij^[h[if[Yj_l[9>?
Contract size
Quotation
9>??dZ[nFe_dji
tick size
&$'9>??dZ[nFe_dj
tick Value
&$'9>??dZ[nFe_dj3'&&
;nfh[ii[Z_dj[hcie\j^[9>?\ehj^[bWh][ij^khh_YWd[jecWa[bWdZ\Wbbm_j^_dWif[Y_ÒYbeYWj_edX[jm[[d@WdkWho'WdZ:[Y[cX[h)'
_dYbki_l[e\WYWb[dZWho[Wh
Contracts traded
;nfh[ii[Z_dj[hcie\j^[bWh][ij9>?#9Wj#?d#7#8enlWbk[\ehWbb^khh_YWd[ij^WjeYYkhm_j^_dWif[Y_ÒY][e]hWf^_YWh[WX[jm[[d@WdkWho'
WdZ:[Y[cX[h)'_dYbki_l[e\WYWb[dZWho[Wh
=kb\9eWij
(Brownsville, TX to AL/FL Border)
Locations
<beh_ZW
(AL/FL Border to Fernandina Beach, FL)
Iekj^[hd7jbWdj_Y9eWij
(Fernandina Beach, FL to NC/VA Border)
Dehj^[hd7jbWdj_Y9eWij
(NC/VA Border to Eastport, ME)
;Wij[hdK$I$
(Brownsville, TX to Eastport, ME)
9>?#9Wj#?d#7#8en=Wbl[ijed#CeX_b[
(area bounded by 95°30’0”W on the West, 87°30’0”W on the East, 27°30’0”N on the South, and the corresponding segment of the U.S. coastline on the North)
>=C3=kb\9eWij
ticker symbols
><C3<beh_ZW
>II3Iekj^[hd7jbWdj_Y9eWij
>DC3Dehj^[hd7jbWdj_Y9eWij
>NC3;Wij[hdK$I$
>FC39>?#9Wj#?d#7#8en=Wbl[ijed#CeX_b[
JhWZ_d]i^Wbbj[hc_dWj[Wj/0&&W$c$9Jedj^[Òhij;nY^Wd][
Xki_d[iiZWoj^Wj_iWjb[WijjmeYWb[dZWhZWoi\ebbem_d]j ^[[dZe\j^[^khh_YWd[i[Wieded:[Y[cX[h)'
termination of
trading
strike price
interval
D%7
'?dZ[nFe_dj[$]$'&"''"'("[jY$
Exercise
D%7
7c[h_YWd#ijob[[n[hY_i[ZWdoj_c[kfjeWdZ_dYbkZ_d]BJ:
settlement
7bb\kjkh[iYedjhWYjih[cW_d_d]ef[dWjj^[j[hc_dWj_ede\jhWZ_d]
i^WbbX[i[jjb[Zki_d]j^[h[if[Yj_l[9>?i[WiedWbcWn_ckcÒdWb
lWbk[h[fehj[ZXo;G;97J
D%7
7bb\kjkh[iYedjhWYjih[cW_d_d]ef[dWjj^[j[hc_dWj_ede\jhWZ_d]
i^WbbX[i[jjb[Zki_d]j^[h[if[Yj_l[9>?i[WiedWbcWn_ckc
9Wj#?d#7#8enÒdWblWbk[h[fehj[ZXo;G;97J
position Limits
Fei_j_edWYYekdjWX_b_jo\ehfei_j_edi[nY[[Z_d]'&"&&&YedjhWYji_d
WdoYedjhWYjcedj^
Fei_j_edWYYekdjWX_b_jo\ehfei_j_edi[nY[[Z_d]'&"&&&
\kjkh[i#[gk_lWb[djYedjhWYjid[jedj^[iWc[i_Z[e\j^[cWha[j_d
WdoYedjhWYjcedj^
trading Hours
Eõ[h[Z[nYbki_l[boedj^[9C;=beX[n[b[Yjhed_YjhWZ_d]fbWj\ehc
edIkdZWoij^hek]^J^khiZWoi"+0&&f$c$Ä)0'+f$c$9Jj^[
\ebbem_d]ZWo/0&&W$c$9JBJ:
JhWZ[Zl_Wef[dekjYho_dj^[D7I:7G#'&&f_jedCedZWoi
j^hek]^<h_ZWoi".0)&W$c$Ä)0'+f$c$9Jj^[\ebbem_d]ZWo
/0&&W$c$9JBJ:
For more information on Weather futures and options, visit www.cmegroup.com/weather.
CME GROUP HEADQUARTERS
20 south Wacker Drive
Chicago, illinois 60606
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CME GROUP GLOBAL OFFICES
info@cmegroup.com
800 331 3332
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number:
Filing date:
ESTTA562533
10/02/2013
Proceeding
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
77199918
Applicant
Chicago Mercantile Exchange Inc.
Applied for Mark
CHI
Correspondence
Address
Submission
TATYANA V GILLES
NORVELL IP LLC
1776 ASH STREET
NORTHFIELD, IL 60093
UNITED STATES
officeactions@norvellip.com
Exhibit B to Applicant's Brief
Attachments
Exhibit B final.pdf(2222197 bytes )
Filer's Name
Tatyana V. Gilles
Filer's e-mail
officeactions@norvellip.com, jkucala@norvellip.com, tgilles@norvellip.com
Signature
/Tatyana V. Gilles/
Date
10/02/2013
222 USPQ
89
In re Betz Paperchem, Inc.
proper, since as the name of the game, the
term sought to be registered is so descriptive
that it is incapable of distinguishing services
consisting of conducting the games and conducting tournaments in which the game is
played from the game itself.
With respect to the applicant's claim that
the term functions as a trademark for equipment and clothing used to play the game, we
come to the same result. Again we must look
to the specimens to evaluate how the mark
would be perceived by prospective purchasers
of the goods. The specimens for Class 25 are
photos of shorts, with one leg bearing the
stylized version of "WALLYBALL" as
shown on the drawing submitted with the
application. The specimens for the Class 28
goods are photos of a net apparatus, also
showing the stylized version of "WALLYBALL" printed across the top band of the
net.
[2] We agree with the Examining Attorney
that these specimens show highly descriptive
use of the mark, in the same sense that
printing the term "Baseball" on a baseball
cap or "Football" on a football goal post
would be descriptive uses of "Baseball" and
"Football." It is a well-settled principle of
trademark law that a term is merely descriptive of goods if it describes their function or
intended purpose. In re The Realistic Company, 159 USPQ 445 (TTAB 1968). In light
of the other evidence of record, particularly
the aforementioned extensive newspaper evidence that the public knows of and refers to
the game itself as wallyball, we have no doubt
that when a prospective purchaser sees
"WALLYBALL" on game equipment or
sports clothing, he or she perceives of the term
not as an indicator that the goods emanate
from a particular soure, but rather that the
goods are for use in connection with playing
the game of wallyball. There is no persuasive
evidence to the contrary, nor is there support
for applicant's contention that the term has
achieved any secondary meaning as a trademark for sport shirts and shorts.
[3] It is easy to appreciate the feelings of
applicant's president, Mr. Garcia, who invented wallyball and from the record before
us appears to be the prime mover in promoting and popularizing the game. He has obviously invested immense creative energy and
personal effort, as well as a substantial
amount of money, in devising and promoting
the sport. He and the applicant corporation of
which he is president would naturally like to
exclusively appropriate the name they coined
to identify the game. Unfortunately for the
applicant, more than just the intention to use
a term as a trademark or as a service mark is
required. In order for a term to be registrable
as a mark under the Lanham Act the term
must be used as a mark, as shown by the
specimens. As explained above, the specimens
and other materials in the record in this case
do not show "WALLYBALL" used in this
way.
Decision
The refusals to register are affirmed.
Patent and Trademark Office
Trademark Trial and Appeal Board
In re Betz Paperchem, Inc.
Decided Mar. 6, 1984
TRADEMARKS
1. Registration- Service marks (§67.761)
Test for whether activity is separate service
involves ascertaining what applicant's principal activity under mark in question is, that is,
sale of service or sale of tangible product, and
then determining whether activity embraced
by description of services or goods in application is in any material way different kind of
economic activity than what any purveyor of
principal service or tangible product necessarily provides.
Appeal from Trademark Examining
Attorney.
Application for registration of trademark of
Betz Paperchem, Inc., Serial No. 299,236,
filed Mar. 2, 1981. From decision refusing
registration, applicant appeals. Reversed.
Bruce E. Peacock, Trevose, Pa., for
Before Fruge,
Members.
Krugman,
applican~.
and
Cissel,
Cissel, Member.
Applicant has applied to register the term
"BETZ
PAPERCHEM
SEMI-BULK
CONTROL" 1 for "service programs in1
The original drawing showed the alleged
mark as " PAPERCHEM SEMI-BULK CONTROL." The Examining Attorney in the March
17, 1982 office action required amendment to show
the term as "BETZ PAPERCHEM SEMIBULK CONTROL PROGRAM," which is how
it appears on the specimens of record, but applicant's amendment to add only the word "BETZ" to
its drawing was accepted without comment by the
Examining Attorney. We therefor,e deem the requirement to include "PROGRAM" to have been
waived by the Examining Attorney, although the
better practice would have been for him to address
the issue direct! y.
-
~
90
In re Betz Paperchem, Inc.
volving the feed, delivery, and storage of liquid chemical products to the pulp and paper
industry." 2 Registration was refused by the
Examining Attorney based on the allegation
that the applicant is not rendering a service
within the meaning of the Lanham Act. No
statutory basis for the refusal was given in the
original refusal, but the Examining Attorney
subsequently specified Sections 1 and 45 of
the Act, 15 U.S.C. 1051 and 1127. When the
refusal was made final applicant instituted
this appeal.
,
Section 1 of the Act begins with the words:
"The owner of a trademark used in commerce may register his trademark unde this
Act on the principal register hereby
established * * *"
Section 45 of the Act defines a service mark
as
"A mark used in the sale or advertising of
services to identify the services of one person and distinguish them from the services
of others."
The Examining Attorney has taken the
position that applicant's activities of automatic ordering, delivering, storing and disposing
of containers of liquid chemicals is merely
incidental to the sale of applicant's chemicals
and does not by itself constitute a service as
contemplated by the legislators who enacted
the trademark statute.
The applicant disagrees, contending that
the activities in which it engages constitute a
service, and therefore that the mark it uses to
identify these activities is registrable as a
service mark.
To determine what the term is actually
used to identify we must examine the specimens. In this case the specimens of record are
advertising brochures. The cover of the brochure shows photographs and drawings of
various industrial equipment associated with
paper production. The term sought to be
registered appears at the top of the page, with
"A major innovation in chemical feed and
delivery systems for the pulp & paper industry" printed below. The rest of the brochure
illustrates and explains in detail the nature of
applicant's activities.
Applicant helps its customers control their
inventories and simplifies ordering, receiving,
using and disposing of containers of liquid
chemical products. Applicant does this by
2
Serial No. 299,236, filed March 2, 1981, first
use on February 12, 1981 claimed.
222 USPQ
maintaining a computer data base of customers' requirements, such as what kind o(
chemicals they need and the rate at which the
chemicals are used. Applicant then establishes
an automatic delivery schedule that ensures
an uninterrupted supply of chemicals without
the customer having to order and schedule
deliveries.
The required chemicals are delivered in
large (300 gallon), stackable tanks. Applicant
maintains and repairs the tanks, as well as
the associated equipment used to feed the
chemicals into the various industrial areas
where it is used. This equipment can include
pumps, timers and gauges.
As the tanks are emptied, applicant installs
new, full ones and removes the empties,
cleans, rinses, refills, and returns them as the
customer needs them.
The statute does not specify what sort of
activity is a service. We do get guidance from
case law, however, and the Trademark Manual of Examining Procedure (TMEP) gives
us infonpation on the policy followed in the
past by the Patent and Trademark Office.
TMEP Section 1301.01 sets forth the three
basic criteria: (1) a Service is the performance
of some activity; (2) the activity must be for
the benefit of someone other than the applicant; and (3) the activity must be recognizable
as a separate activity, that is, it cannot be
merely incidental or necessary to applicant'~
larger business.
In the case at hand there is no doubt that
applicant's actions in providing inventory
control, cleaning, inspecting, and refilling
tanks, delivering· tanks, and maintaining and
repairing tanks and related equipment constitute an activity performed for the benefit of its
customers. The Examining Attorney does not
contest this. He argues that applicant's rendering of these activities is basically only
incidental to applicant's main business activity, the sale of the liquid chemicals. For the
reasons which follow we disagree.
[1] The test for whether an activity is a
separate service was clearly enunciated in the
case of In re Landmark Communications,
Inc., 204 USPQ 693 (TTAB 1979) . At p.
695 Board Member Kera states that* * * "we
should first ascertain what is an applicant's
principal activity under the mark in question,
i.e., the sale of a service or the sale of a
tangible product, and then determine whether
the activity embraced by the description of
services or goods in the application is in any
material way a different kind of economic
activity than what any purveyor of the principal service or tangible product necessarily
-
222 USPQ
In re Betz Paperchem, Inc.
provides." In that case the principal activity
of applicant was that of publishing and selling newspapers. The services identified in the
application were "educational and entertainment services" comprising the dissemination
of information by means of a newspaper
section. The specimens showed that the term
sought to be registered was used as the title of
a section of applicant's newspaper. In holding
that applicant sold goods, not services, the
Board found applicant's activities to be "indispensable components of newspapers."
Application of this analysis to the instant
case yields a different result. That the primary business of the applicant now before us is
the sale of liquid chemicals is not in dispute.
The application identifies applicant's "service
programs" and specifies that they involve the
feed, delivery and storage of the chemicals.
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We hold that this activity, as set forth in
the identification of services clause in the
application and as further demonstrated by
the advertising brochures of record, is a different kind of activity than what an ordinary
purveyor of such chemicals necessarily provides. The specimens show that these chemicals are ordinarily sold in standard industrial
55-gallon drums. Industrial buyers simply
order the drums and shipment is arranged.
That is the extent of an ordinary sales transaction involving goods of this nature. Under
various laws customers are usually burdened
with meeting by themselves the stringent requirements concerning cleaning and disposal
of used chemical containers.
Applicant's activities, as described earlier
in this opinion, extend far beyond the routine
sale of liquid chemicals. The larger size of
applicant's containers is not determinative,
but the fact that no capital investment is
required for the .drums, tanks and pads is a
clear benefit for applicant's customers. Moreover, the inventory control services, maintenance and repair services, and container disposal activities are certainly not parts of an
ordinary sale of liquid chemicals to pulp and
paper producers. These are services performed for the benefit of applicant's customers, separable and distinct from the sale of the
goods. Because the specimens show the term
sought to be registered used to identify these
activities, we hold that use of the term as a
service mark has been demonstrated ."
Other case law supports this conclusion.
The case at hand is consistent with In re
John Breuner Company , 136 USPQ 94
(TTAB 1963), where making credit available
to customers of a retail store was held to be a
91
service within the meaning of the Act because
the extension of credit was neither mandatory
nor usual in the operation of such a business.
The case of In re Onion Research Incorporated, 187 USPQ 485 (CCPA 1975) is relied
upon by the Examining Attorney, but is easily distinguished. It actually supports the position taken by the applicant. That case dealt
with a guarantee by the seller of goods to
repair or replace defective merchandise. The
court held that a guarantee to repair or replace one's own goods is an activity normally
associated with the sale of such goods, thus
subjecting the issue to the same analysis set
forth in the Landmark Communications, Inc.
case, supra.
We think the specific language used in the
application could have been more direct in
describing applicant's services. In its brief
applicant identifies the services in clear terms
that leave no doubt as to what its activities for
clients are: " 1) providing inventory control 2)
cleaning, inspecting, and rinsing tanks; and 3)
maintaining tanks and feed equipment in
operative condition. " If this language originally had been adopted together with terms
identifying the field of commerce as the liquid
chemicals business for the pulp and paper
industry, the case might have been easier for
the Examining Attorney to resolve in favor of
the applicant. By using the somewhat less
specific term "service programs" applicant
did not communicate the precise nature of its
activities as clearly as it could have. The
Examining Attorney has not objected to how
the services a re described in the application ,
however, so th is issue not before us for decision . The Examining Attorney refused registration on the grounds that applicant was not
using the term sought to be registered as a
service ma rk. As stated above, the refusal was
improper.
Decision
The refusal· to register is reversed.
IN RE BTIO, 2001 WL 873280 (2001)
2001 WL 873280 (Trademark Tr. & App. Bd.)
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B.
Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
IN RE BTIO EDUCATIONAL PRODUCTS, INC., BY CHANGE OF NAME FROM BABY THINK IT OVER, INC. 1
Serial No. 75/712,224
August 1, 2001
*1 Michael S. Sherrill of Sherrill Law Offices for BTIO Educational Products, Inc., by change of name from Baby Think It
Over, Inc.
Florentina Blandu, Trademark Examining Attorney
Law Office 112
(Janice O'Lear, Managing Attorney).
Before Simms, Chapman and Rogers
Administrative Trademark Judges.
Opinion by Chapman
Administrative Trademark Judge:
Applicant filed, on May 17, 1999, an application to register the mark SOME DECISIONS LAST A LIFETIME on the Principal
Register for “educational dolls and printed instructional materials for use with the dolls, all sold as a unit” in International
Class 28. Applicant bases its application on Section 1(a) of the Trademark Act, claiming a date of first use in commerce of
August 14, 1996. 2
Registration has been finally refused in the application because applicant has failed to submit specimens acceptable to the
Examining Attorney. Specifically, the Examining Attorney asserts that the specimens submitted by applicant do not show use
of the mark on or in connection with the identified goods as required by Trademark Rule 2.56. 3
Applicant has appealed, and briefs have been filed. Applicant did not request an oral hearing.
The specimens submitted by applicant are photocopies of the front page and the back page of applicant's February 1999 catalog,
the mark SOME DECISIONS LAST A LIFETIME appears on the back page. A photocopy of applicant's specimen is reproduced
below (in reduced form):
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
1
IN RE BTIO, 2001 WL 873280 (2001)
Applicant has not submitted any substitute specimens.
However, with its brief on appeal, applicant submitted a photocopy of its entire February 1999 catalog, stating that it was “to
provide complete information in this case” and “to assist the Board's understanding of the case.” (Brief, p. 4). The Examining
Attorney objected to the additional evidence submitted with applicant's brief, and she requested that the evidence be excluded.
The record in an application should be complete prior to the filing of an appeal, and additional evidence filed after appeal
will be given no consideration by the Board. See Trademark Rule 2.142(d), and TBMP §1207.01. Inasmuch as the additional
material was filed after the appeal, and the Examining Attorney objected thereto, applicant's additional evidence is untimely
pursuant to Trademark Rule 2.142(d). Accordingly, the catalog (other than the front and back pages which were previously
made of record) attached to applicant's appeal brief does not form part of the record on appeal and has not been considered
in making our decision. 4
Turning to the merits of the appeal, the sole issue before us is whether the specimens submitted with the application are
acceptable specimens of use of the mark SOME DECISIONS LAST A LIFETIME for the goods set forth in the application.
*2 The dissent disagrees with our statement of the issue on appeal, and construes the issue as whether applicant's slogan
functions as, or would be perceived as, a mark, not whether the specimens are acceptable proof of trademark use. We note,
however, that the Examining Attorney and applicant discuss sufficiency of specimen cases at length, not cases dealing with
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
2
IN RE BTIO, 2001 WL 873280 (2001)
the question whether a slogan would be perceived as a mark. Moreover, we note that the Examining Attorney accepted the
specimens in the file for applicant's services but refused those for applicant's goods. If, as the dissent argues, the Examining
Attorney's position is that applicant's slogan does not function as a mark, the specimens for the services would not have been
accepted, for they present the slogan in a virtually identical display as the specimens for the goods. The dissent urges that we
presume a certain correctness of Examining Attorney decision-making. In fact, we do exactly that by considering only the basis
for refusal the Examining Attorney has chosen to articulate. 5
Applicant contends that pursuant to the case of Lands' End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va.
1992), and TMEP §905.06(a), the Examining Attorney should accept as a proper specimen any catalog (a display associated
with the goods), provided that it includes (i) a picture of the goods, (ii) the mark sufficiently near the picture of the goods to
associate the mark with the goods, and (iii) information necessary to order the goods. Applicant concludes that applying this
criteria, the back page of its catalog is an acceptable specimen.
While agreeing with applicant's statement of the law in the Lands' End case, the Examining Attorney disagrees that applicant's
specimens meet those requirements. Specifically, the Examining Attorney contends that applicant's use of its mark “appears to
be a slogan that the applicant is using in advertisements and not as wording to identify the goods in question (the doll)” (Final
Office action, p. 2); that the specimen does not clearly indicate that applicant offers dolls for sale under the mark SOME
DECISIONS LAST A LIFETIME, but rather the manner of use of the applied-for mark is that “of a slogan and the doll appears
as a visual aid intended to give greater weight to the slogan in question” (brief, p. 4); that there is much verbiage appearing on the
page, all of it in close proximity to the slogan SOME DECISIONS LAST A LIFETIME; and that consumers will not perceive
the wording SOME DECISIONS LAST A LIFETIME as a source indicator for dolls. Further, while the specimens include a
telephone number for ordering the goods, the Examining Attorney finds the lack of information on the cost of the doll 6 , or the
page number where specific information on the pictured goods could be found inside the catalog unacceptable. In conclusion, the
Examining Attorney finds this situation more analogous to the case of In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997)
(wherein asserted “fact sheet” brochures or “catalog pages” were found to be mere advertising and unacceptable specimens).
*3 We emphasize that, despite references in the file which might suggest otherwise, the Examining Attorney has not refused
registration on the basis that the applied-for mark fails to function as a trademark under the Trademark Act. 7 Rather, the sole
issue before us on appeal is whether the specimens submitted with the application are acceptable under the Court's decision in
Lands' End interpreting the Trademark Act, as applicant contends, or are unacceptable advertising as in the Board's decision in
the MediaShare case. Cf., for example, In re Walker-Home Petroleum, Inc., 229 USPQ 773 (TTAB 1985).
Section 1 of the Trademark Act, as well as Trademark Rule 2.56, require that prior to registration applicant submit a specimen
showing the mark as used on or in connection with the goods in commerce. Trademark Rule 2.56(a) reads as follows:
An application under section 1(a) of the Act, an amendment to allege use under §2.76, and a statement of
use under §2.88 must each include one specimen showing the mark as used on or in connection with the
goods, or in the sale of advertising of the services in commerce.
Following the 1992 decision of the United States District Court for the Eastern District of Virginia in the Lands' End case, supra,
the USPTO revised the section of the Trademark Manual of Examining Procedure (TMEP) dealing with catalogs as specimens.
TMEP §905.06(a) reads, in relevant part, as follows: 8
In accordance with this [the Lands' End] decision, examining attorneys should accept any catalog or similar specimen as a
display associated with the goods, provided that (1) it includes a picture of the relevant goods, (2) it includes the mark sufficiently
near the picture of the goods to associate the mark with the goods, and (3) it includes information necessary to order the goods.
Any form of advertising which satisfies these criteria should be construed as a display associated with the goods.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
3
IN RE BTIO, 2001 WL 873280 (2001)
We agree with applicant that the last page from its catalog showing the mark SOME DECISIONS LAST A LIFETIME meets
the criteria set forth above. The specimen clearly pictures a doll being held by a teenage boy. We believe the purchasing public
would certainly notice the doll, and there is no requirement in the Lands' End case or the TMEP that the specimen must picture
every separate doll offered for sale. That is, even if applicant offers several different types or models of dolls, each separate one
need not be pictured in order for the specimen to be an acceptable display associated with the goods. 9
The mark appears sufficiently near the pictured doll to associate the mark with the goods. The Examining Attorney
acknowledges in her brief (p. 4) that the specimens would be acceptable if the question were the proximity of the marks BABY
THINK IT OVER and/or GENERATION 4 for dolls. The applied for mark SOME DECISIONS LAST A LIFETIME appears
in very large type on the left side of the page approximately one inch from the doll's head, whereas, GENERATION 4 appears
in smaller type approximately 2 inches from the doll's head. Applicant has achieved sufficient proximity of the mark and the
picture of the goods for the purchasing public to associate the mark with the goods.
*4 The specimen clearly includes a telephone number for ordering applicant's products. The Examining Attorney's concern
that the specimen sets forth the cost of only one model of the doll, and does not set forth the page number inside the catalog
where the specific models and associated price information may be found is simply not required by the Trademark Act or the
Lands' End case.
We readily acknowledge that the facts of this case are not precisely the same as those in the Lands' End case. For example, in
the Court case, the catalog displayed several different goods per page, each with a picture and a description of the item, whereas
in the case now before us, applicant's mark is depicted on the back page with only one featured item for sale appearing on the
same page. However, as explained earlier herein, the only refusal before this Board is based on the requirement for acceptable
specimens, not an assertion that the applied-for mark fails to function as a trademark, as used on the specimen. If our decision
is an extension of the Lands' End decision at all, it is not a dramatic extension, but rather is a slight extension which is clearly
in keeping with the spirit of the Lands' End case, and the policy stated in the TMEP regarding catalog pages as specimens for
goods. See In re Hydron Technologies Inc., 51 USPQ2d 1531 (TTAB 1999).
The MediaShare case, where applicant's goods were identified as “computer software for publishing information on a computer
network and instructional manuals therefor, sold together as a unit,” and the specimens were held to be mere advertising material
is distinguishable from the case now before us. For example, in that case applicant's “fact sheet” showed three computer screen
displays, yet the Board found none of these “appears to constitute or include a picture of applicant's ‘PB.WEB’ computer
software, whether in use or otherwise.” MediaShare, supra at 1306. Thus, the specimens in that case failed to meet the second
requirement of the Lands' End case.
To the extent we have any doubt on the question of whether applicant's use of the mark SOME DECISIONS LAST A LIFETIME
on the back page of its catalog constitutes an acceptable display associated with the goods, we resolve that doubt in favor of
applicant.
Decision: The refusal to register based on a requirement for acceptable specimens is reversed.
DISSENTING OPINION
*5 Simms
Administrative Trademark Judge
Because I agree with the Examining Attorney that applicant has not demonstrated trademark use of the slogan sought to
be registered and that customers will not view applicant's slogan as a means of identifying and distinguishing the source of
applicant's dolls, I would affirm the requirement for specimens which show use of the asserted mark as a trademark.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
4
IN RE BTIO, 2001 WL 873280 (2001)
A copy of the last page of applicant's mail-order catalog is reproduced on page 3 of the majority's opinion. For illustrative
purposes, other pages, beginning with the front page of applicant's catalog, are reproduced (in reduced form) below.
I believe the Lands' End case cited by the majority is distinguishable. In that case, the obvious trademark KETCH appeared
with a picture of a purse along with a description of the goods. The court concluded the consumers can associate the product
with the mark in applicant's mail-order catalog, and that the catalog could be considered a display associated with the goods.
The mark KETCH and the description of the goods, the court noted, also distinguished that product shown in the catalog from
others shown in the catalog. That case should not be read as holding that any word or slogan prominently used with a picture of
the goods and ordering information is acceptable trademark use such that the catalog always acts as a display associated with
those goods. Lands' End should not be mechanistically applied to permit registration as a mark of such an informational slogan
merely because such slogan is prominently displayed next to a picture of the goods with ordering information.
While the Examining Attorney acknowledges that catalogs used as displays associated with the goods may be acceptable
specimens showing trademark use, in this case the Examining Attorney has refused registration because the specimens of record
do not show use of the asserted mark in connection with applicant's educational dolls. It is the Examining Attorney's position
that the manner in which the specimens show the asserted mark to be used is simply as a slogan used in promoting applicant's
goods and not as a trademark for applicant's dolls. In other words, the question here is not whether these specimens would be
acceptable if applicant were using a mark to identify and distinguish its goods from those of others. The Examining Attorney
does not contend that applicant's mail-order catalogs would be unacceptable if applicant were in fact using a mark to identify
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
5
IN RE BTIO, 2001 WL 873280 (2001)
and distinguish its goods, as in the Lands' End case. The majority parses the Examining Attorney's refusal here to state that the
Examining Attorney is not arguing that the slogan presented for registration does not function as a mark. However, I believe
that is precisely what the Examining Attorney is saying. The Examining Attorney states that the asserted mark is merely a
slogan that applicant is using in its catalog and is not wording which identifies and distinguishes applicant's dolls. See Final
Refusal, 2. The Examining Attorney contends, in my view correctly, that consumers will not perceive the slogan as a trademark
for applicant's dolls. It is difficult for me to believe that consumers would perceive the informational or promotional phrase
“Some decisions last a lifetime” on the last page of applicant's mail-order catalog as a trademark identifying and distinguishing
applicant's dolls, especially in view of the use of applicant's obvious trademark BABY THINK IT OVER and its trade name on
the same page. Cf., for example, Hoover Co. v. Royal Appliance Mg. Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001)
(slogan used in close proximity to party's principal trademark not likely to be perceived as a trademark). One wonders if the
majority would reach the same decision it does here if, instead of the asserted mark SOME DECISIONS LAST A LIFETIME,
applicant instead were using simply the statement “ORDER THIS DOLL TODAY.”
*6 Under the guise of the Lands' End case, the majority here sanctions the registration of a slogan which is not used as a
trademark. Applicant's slogan is not obviously a trademark but is more in the nature of an informational or advertising phrase.
While shown in relatively close proximity to one of applicant's dolls, this slogan is on the last page of applicant's mail-order
catalog and is, significantly, used nowhere else in the catalog. In addition, as shown above, other slogans of a similar nature
are used on other pages in the catalog. Therefore, I agree with the Examining Attorney that consumers would not perceive the
slogan shown on only one page of applicant's catalog as a mark for the doll pictured on that page. 10
Finally, the majority, citing no authority, states that on the issue of acceptable specimens, doubt should be resolved in favor
of applicant. It is to be noted that the court in the Lands' End case indicated that the issue of whether displays associated with
the goods are acceptable as trademark use is a factual question. Where questions of fact have been presented, the Board has
on occasion entertained a presumption of correctness of an Examining Attorney's judgment. See, for example, In re Tilcon
Warren, Inc., 221 USPQ 86 (TTAB 1984) (whether matter presented for registration functioned as a mark was a question of fact
concerning which the judgment of the Examining Attorney is entitled to a presumption of correctness); and In re Keyes Fiber
Company, 217 USPQ 730, 734 (TTAB 1983) (where the asserted mark consisted of subject matter not ordinarily perceived as
a trademark, the Examining Attorney's evaluation that it was not entitled to registration was a presumption which had to be
overcome by persuasive evidence to the contrary) and cases cited therein.
We should only register slogans that perform the function of a mark, and not pretend that other informational or promotional
slogans function as marks when they are used prominently with the goods with which they are sought to be registered. I would
affirm the refusal that the specimens do not show use of the slogan as a mark for dolls.
Footnotes
Applicant's change of name was recorded with the Assignment Branch of this Office in January 2001 at Reel 2219, Frame 0195.
1
The application also included services, specifically, “providing information in the fields of infant care simulation programs and
2
3
4
pregnancy deterrence by means of a global computer network” in International Class 42. Registration was initially refused for both
classes based on the Examining Attorney's requirement for acceptable specimens. However, the Examining Attorney withdrew the
refusal as to the International Class 42 services. Applicant then filed a request to divide out that class and Serial No. 75/980,029 was
created for International Class 42. (Serial No. 75/980,029 was published for opposition on March 27, 2001.)
In her brief on the case the Examining Attorney cited Trademark Rule 2.58 and TMEP §1301.04, both of which refer to specimens of
use for service marks. Moreover, Trademark Rule 2.58 was removed and reserved by Final Rule notice appearing in the September
28, 1999 Official Gazette, with an effective date of October 30, 1999. The relevant provision of the Trademark Rules of Practice is
found in Trademark Rule 2.56. (The Examining Attorney had cited Trademark Rule 2.56 and TMEP §905 in the first Office action.)
To the extent applicant's purpose in filing the complete catalog was to prove that its specimen truly is the back cover of its catalog,
the submission was not necessary, as the Examining Attorney has not disputed this point.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
6
IN RE BTIO, 2001 WL 873280 (2001)
5
6
7
8
9
10
Likewise, we have acknowledged the correctness of the Examining Attorney's argument for exclusion of applicant's catalog as the
subject of an untimely proffer. The dissent, without pointing to any error in the Examining Attorney's position, nonetheless freely
considers this untimely evidence.
In fact, the specimen clearly indicates that at least one model of applicant's dolls is available at a “special” price of $199. It is unclear
whether the pictured model is the particular model available at this price.
Thus, we do not wonder, as does the dissent, about whether applicant's slogan, or other slogans, could properly be refused registration
as failing to function as marks.
The Court specifically stated “[t]he question for determination here is whether Lands' End's use of the term ‘KETCH’ in the manner
described above in its retail catalog constitutes a use of ‘displays associated’ with the goods satisfying the use in commerce provision
in 15 U.S.C. §1127,” and the Court found that it did.
We do not, as the dissent implies, countenance registration under Lands' End of a mark for widely varying goods appearing anywhere
in a catalog. Rather, we simply acknowledge that an item in a catalog may be available in different colors or sizes or with slight
variations not significant enough to utilize a photograph of every variation, when these differences can be noted in the catalog's
description of the goods.
Without authority, the majority states that applicant's specimens need not picture every doll offered for sale under its asserted mark.
Aside from the fact that this issue does not appear to be raised by the arguments of the attorneys, this statement would appear to be at
odds with Lands' End, which held that the catalog presented a display associated with the goods by the use of the mark KETCH next
to a picture and the description of the goods. The court did not state or imply that this mark functioned as a trademark for other goods
not pictured near the mark. In fact, the clear implication is to the contrary, the court stating that the mark KETCH helped distinguish
the product next to which it was pictured from others.
2001 WL 873280 (Trademark Tr. & App. Bd.)
End of Document
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
7
In re Caldwell Tanks, Inc., 2002 WL 376688 (2002)
2002 WL 376688 (Trademark Tr. & App. Bd.)
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B
Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
IN RE CALDWELL TANKS, INC.
Serial No. 75/672,039
March 8, 2002
*1 Jack A. Wheat and Jamie K. Neal of Stites & Harbison for Caldwell Tanks, Inc.
Megan Sweeney, Trademark Examining Attorney
Law Office 115
(Tomas Vlcek, Managing Attorney) 1
Before Seeherman, Bottorff and Rogers
Administrative Trademark Judges
Opinion by Seeherman
Administrative Trademark Judge
Caldwell Tanks, Inc. has appealed from the final refusal of the Trademark Examining Attorney to register STAC-4 and design,
as shown below, as a service mark for “construction of elevated tanks.” 2
Registration has been refused pursuant to Sections 1, 2, 3 and 45 of the Trademark Act, 15 U.S.C. 1051, 1052, 1053 and 1127,
on the ground that the proposed mark identifies a system, rather than being used as a service mark to identify the source of
the identified services.
The appeal has been fully briefed; an oral hearing was not requested.
In order to determine whether STAC-4 and design functions as a mark for applicant's identified services of “construction of
elevated tanks,” we must look at the specimens and other advertising material submitted by applicant. In re Produits Chimiques
Ugine Kuhlmann Societe Anonyme, 190 USPQ 305 (TTAB 1976). Further, because applicant's services are offered to a
specialized audience, we must consider the specimens and other literature in light of this audience.
Applicant has explained that its identified services, “construction of elevated tanks,” refer to the construction of water towers.
These water towers are a composite elevated tank in which a metal water tank is placed atop a cement silo type tower. Applicant
has explained that construction of the water tower is its service, and the references in the specimens to the manner of construction
identify not only a process, but the service as well.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
1
In re Caldwell Tanks, Inc., 2002 WL 376688 (2002)
The specimens prominently feature the trademark STAC-4 and design, under which is the explanation “Specified Tolerance for
Architectural Construction.” A caption under the words “STAC-4 by Caldwell Tanks” states “A Superior Jump Form System
for the Construction of Composite Elevated Water Tanks” and the text below that heading includes the following:
Designed to meet construction tolerances for plumb, roundness, and leveling in composite elevated tank shafts, STAC-4 allows
Caldwell's construction personnel control of the concrete pour by limiting the form height to four feet. …
STAC-4's diameter specific forms utilize reusable wall spacers, eliminating potential bulging of forms as well as the plug holes
cause by alternative systems' ties. … Finally, STAC-4's unique rustication pattern hides all horizontal and vertical construction
joints, further enhancing the appearance of the tank shaft.
*2 On the obverse side of the brochure specimen, under a prominent display of STAC-4 and design, is the following text:
Caldwell's STAC-4 jump form system provides greater control of concrete construction tolerances in the
erection of composite elevated tank shafts. Utilizing three, four-foot high, steel forms, STAC-4 meets or
exceeds all ACI 371R-97 guidelines for the analysis, design and construction of concrete pedestal water
towers while delivering a smooth geometric appearance.
This page of the brochure also has a column captioned “Advantages of the STAC-4 system” which lists various benefits,
including, “unique rustication pattern hides vertical and horizontal form joints”; “designed specifically for composite elevated
tanks”; and “constructed solely by Caldwell personnel.”
Although both applicant and the Examining Attorney have cited various cases dealing with whether the name of a process can
function as a mark, these cases are so fact specific, in terms of whether the particular specimens show trademark or service
mark use, that they are of little help in our analysis herein. They do, however, stand for the following legal propositions: if a
term is used only as the name of a process it does not function as a mark, In re Universal Oil Products Company, 476 F.2d
653, 177 USPQ 456 (CCPA 1973); a term can be the name of a process and still function as a mark for services, In re Produits
Chimiques Ugine Kuhlmann, supra; and the fact that the word “process” is used in connection with the term does not ipso
facto mean that it designates a process and not more. In re Stafford Printers, Inc., 153 USPQ 428 (TTAB 1967).
After reviewing the applicant's specimens we find that STAC-4 and design is used as a service mark for the construction of
elevated tanks. Although the specimens use the mark, in part, in conjunction with the phrase “jump form system,” the word
“system,” like “process,” does not automatically prevent a term from functioning as a mark. Here, the construction system is
such an intrinsic part of the construction service that consumers will view STAC-4 and design, as used on the specimens, not
merely as the name of the system, but as a mark for the service.
Decision: The refusal of registration is reversed.
Footnotes
The Examining Attorney who wrote the brief was not the attorney who examined the application.
1
Application Serial No. 75/672,039, filed March 29, 1999, and asserting first use and first use in commerce December 3, 1998.
2
2002 WL 376688 (Trademark Tr. & App. Bd.)
End of Document
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
2
Q
222 USPQ
he
showing that "DARTY" is in fact a surname,
was derived from applicant's own principals,
currently serves as a surname (albeit rare) for
individuals and families in a number of
American cities, and exhibits no definitional
significance beyond that of a surname. Under
these circumstances, the Board is persuaded
that the Examining Attorney's exercise of
judgment in this case was proper and should
be sustained.
ic; it is not met by evidence that only shows
use of mark as name of process and that
company is in business of rendering services
generally, even though advertising of services
appears in same brochure in which name of
process is used; minimum requirement is
some direct association between offer of services and mark sought to be registered
therefor.
Decision
Appeal from Trademark Examining
Attorney.
Application for registration of service mark
of Hughes Aircraft Company, Serial No.
355,094, filed Mar. 17, 1982. From decision
refusing registration, applicant appeals. Affirmed in part.
w-
·or
an
lr·en
:re
on;a:he
ng
rk,
d.•
in
In re Hughes Aircraft Co.
The refusal to register is affirmed.
lOt
te.nd
'he
me
>rd
1lso
;igthe
ant
ord
John E. Benoit, and Benoit, Smith & Laughlin, both of Arlington, Va., for applicant.
Patent and Trademark Office
Trademark Trial and Appeal Board
In re Hughes Aircraft Company
Decided Apr. 30, 1984
:ase
t of
IS a
TRADEMARKS
rev-
:, if
d a
s of
:onred.
NI"
: in
we
>ard
iPQ
JR:ter-
~nly
rent
men
hich
neet
arne
arte
149
tial
ee"
to
ery
ven
if
ers
er-
ot,
he
263
1. Registration- In general (§67.731)
Trademark Act does not preclude registration of mark where there is possibility of
confusion as to source or origin, only where
confusion is likely.
2. Class of s.oods - Particular cases Not similar (§67.2071)
Use of "Photox" for service of forming
oxide layers on semiconductor material, and
for photoconductive zinc oxides, is not likely
to cause confusion.
3. Registration- Service marks (§67.761)
Term used merely to identify process does
not perform function of service mark, but
term used to identify both process and service
rendered in connection therewith constitutes
service mark within meaning of Trademark
Act; question of whether or not term used as
name of process also functions as service mark
must be determined by examining specimens
of record along with any other material made
of record by applicant during prosecution of
case; this will allow determination of commercial impression created by-term as used by
applicant; requirement that mark must be
used in sale or advertising of services to be
registered as service mark is clear and specif-
Before Rice, Krugman, and Cissel, Members.
Krugman, Member.
An application has been filed by Hughes
Aircraft Company to register "PHOTOX" as
a service mark for treating the products of
others by means of photochemical vapor deposition for the purpose of forming oxide
layers on semiconductor material, semiconductor devices and integrated circuits, optical
and electrooptical materials, and optical and
electrooptical components. 1
Registration has been refused by the
Trademark Examining Attorney on two
grounds. Registration has been refused under
Section 2(d) of the Trademark Act on the
ground that applicant's mark so resembles the
previously registered mark "PHOTOX" for
photoconductive zinc oxides 2 as to be likely,
when applied to applicant's services, to cause
confusion, mistake or to deceive. Registration
has also been, refused on the ground that the
subject matter for registration, as used on the
specimens of record as well as on the additional material filed by applicant during the
prosecution of this application, identifies a
procc;:ss rather than a service and is thus
unregistrable under Sections 3 and 45 of the
Act.
Applicant has appealed, asserting that the
goods covered in the cited regi!itption, photoconductive zinc oxides, are far removed from
the services rendered by 'applicant under the
'Application Serial No. 355,094 filed March
17, 1982.
2
Registration No. 743,630 issued January 15,
1963. Renewed.
(
264
In re Hughes Aircraft Co.
"PHOTOX" mark; that applicant performs
a service in the nature of depositing, on substrates provided by its customers, a protection,
that is, a reflc;ctive coating or insulating layer
in a semiconductor device in order to provide
electrical stability within that device; that
registrant's photoconductive zinc oxides are
used to coat paper and provide an image
medium in an indirect electrophotographic
copier; that while zinc oxide has uses in
industries other than the photocopying industry, none of the materials listed in applicant's
description of services is used in conjunction
with zinc oxide and applicant's services apply
to completely different substrate materials
thart does registrant's product. Therefore, applicant concludes, the prospective customers
of applicant's services and of registrant's
product are completely different. With respect to the refusal of registration on the
ground that "PHOTOX" identifies a process
rather than a service, applicant argues that
the term identifies both a process and a service; and that the use of "PHOTOX" as a
service mark to identify applicant's services as
well as a process needed to perform these
services is evidenced by the specimens of
record as well as by other materials submitted
during the course of the prosecution of this
application.
Turning first to the refusal of registration
under Section 2(d) of the Act, since the respective marks are identical, the only issue to
be determined is whether use of the identical
mark on the respective services and goods
would be likely to cause confusion as to
source or origin. In this regard, applicant's
services, as defined in the application, are
specialized services relating to deposition
techniques in the field of semiconductor materials and electrooptical materials. As explained in U.S. Patent No. 4,371 ,587 entitled
a "low temperature process for depositing
oxide layers by photochemical vapor deposition," the manufacture of semiconductor devices frequently requires that a protective
layer be formed to protect the surface of the
substrate. Applicant provides a new and improved process for depositing a layer of an
) oxide of a chosen material on the surface of a
selected substrate by low-temperature photochemical vapor deposition. This coating of
oxide serves to protect the material coated and
guard against damage.
[1,2) We are persuaded by applicant's argument that it is unlikely that those recipients
of applicant's services as defined in the application would encounter "PHOTOX" photoconductive zinc oxides in the normal course of
business nor would purchasers of registrant's
photoconductive zinc oxides be likely to encounter applicant's services rendered under
222 USPQ
the mark. The Examining Attorney's argument that manufacturers of products in the
photography and photocopying industries
would come into contact with both applicant's
and registrant's marks is, in our view, unlikely and speculative. While some awareness of
the respective goods and services sold under
the marks by the same portion of the consuming public is certainly conceivable, the Trademark Act does not preclude registration of a
mark where there is a possibility of confusion
as to source or origin, only where such confusion is likely. We are further persuaded by
applicant's argument that while the identification of services in the application refers to
the coating of optical and electrooptical components, the function of photoconductive zinc
oxides in the coating of paper in order to
provide an image producing surface is so
remote in purpose from applicant's activities
that confusion as to source is highly unlikely.
In short, we conclude that the activities described in applicant's application are designed
for purposes far removed from the purposes
of registrant's goods; that the consumers to
whom applicant's services would be marketed
are different from those consumers of registrant's goods and that while it is possible that
some consumers may come into contact with
both applicant's services and registrant's
goods marketed under the identical mark, it is
unlikely that this would happen and, therefore, no likelihood of source confusion exists
herein, for purposes of Section 2(d) of the
Act.
[3] Turning next to the refusal on the
ground that " PHOTOX" is not used to identify a service, it is settled that while a term
used merely to identify a process does not
perform the function of a service mark, a term
used to identify both a process and the services rendered in connection therewith constitutes a service mark within the meaning of
the Trademark Act. See In re Produits Chemiques Ugine Kuhlmann Societe Anonyme,
190 USPQ 305 (TTAB 1976) and cases cited
therein. The question of whether or not a
term used as the name of a process also
functions as a service mark must be determined by examining the specimens of record
along with any other material made of record
by applicant during the prosecution of this
case. This will allow a determination of the
commercial impression created by the term as
used by applicant. In this regard, the following guidelines have been set forth to be considered in determining whether a term used
as the name of a process also functions as a
service mark.
"* * * The requirement (of the statute)
that a mark must be 'used in the sale or
advertising of services' to be registered as a
222 USPQ
In re Hughes Aircraft Co.
service mark is clear and specific. We think
it is not met by evidence which only shows
use of the mark as the name of a process
and that the company is in the business of
rendering services generally, even though
the advertising of the services appears in
the same brochure in which the name of
the process is used. The minimum requirement is some direct association between the
offer of services and the mark sought to be
registered therefor * * *."
See: In re Universal Oil Products Company,
476 F.2d 653, 177 USPQ 456 (CCPA 1973).
In the present case, applicant's one page
specimen advertising sheet refers to "A new
photochemical vapor deposition · process
* * *." The subject matter for registration is
mentioned twice in the advertisement as follows: "The Hughes PHOTOX process deposits silicon dioxide and other oxide dielectrics on semiconductor devices, and coats
temperature-sensitive electro-optical components * * *. The PHOTOX process is available for non-exclusive licenses * * *." In addition to the advertising sheet specimens,
applicant has submitted a number of other
materials. A promotional brochure entitled
"VECTORS" published by applicant includes a promotional article entitled
"PHOTO FINISH." The text of this article
notes that the " ... Hughes PHOTOX process softly wafts protective oxides across pristine semiconductor surfaces. The benign process derives its name from its function to
photochemically deposit oxides onto microelectric or infrared materials." The text continues as follows: "Unlike the blast furnacetype atmosphere of thermal chemical vapor
deposition, PHOTOX takes place in a tolerable environment * * *. In the PHOTOX
process, ultraviolet light strikes the gas inside
the vacuum chamber, causing a change in its
chemical structure * * *. And application of
the PHOTOX process extends beyond microelectronics***." The article also includes
a number of illustrations. One illustration of
a technician is accompanied by the following
caption: "Hughes PHOTOX process protects
temperature sensitive microelectronic and
electro-optical components." Another illustration of a microcircuit is accompanied by the
following caption: "Multilayer integrated circuits can coexist without shorting on a single
chip because the benign "PHOTOX" process
deposits insulating film without damage to
layer surfaces * * *." A third illustration of
infrared detectors also includes a caption
which notes that "* * * The cool PHOTOX
process gently deposits a protective layer
without impairing the detector material.
Hughes is offering the new process for licensing arrangements."
265
Applicant has also made of record a June
12, 1981 letter from applicant, an August 26,
1981 purchase order, a December 16, 1981
transmittal letter and a January 13, 1982
invoice. The subject of the June 12, 1981
letter is the "Firm Fixed Price Quotation for
Photox Deposition on Custom Furnished
Wafers." Applicant indicates in the letter that
it "* * * is pleased to submit this $ (deleted)
Firm Fixed price quotation for Photox deposition of sixteen (16) customer furnished wafers as follows." Under the heading "Scope of
Work," the letter notes that "Hughes Aircraft
Company will conduct Photox deposition on
sixteen (16) customer-furnished wafers * * *.
We request (deleted) wafer cleaning methods
prior to Photox deposition. After cleaning, a
deposit of Photox Oxide will be applied on all
the wafers in a series of four (4) runs." The
purchase order, transmittal letter and invoice
refer variously to the subject matter for registration as "Photox oxide" and "the Photox
method."
It is the view of the Board that, as used in
the specimens of record as well as in the other
material introduced by applicant, the term
"PHOTOX" is used only in connection with
applicant's deposition process or method.
There is no direct association between applicant's offer of services and the term "PHOTOX," as required by the Court in In re
Universal Oil Products Company, supra.
While we have no doubt that applicant is
performing the service of treating the products of others, the record before us shows
that if anything, it is the mark "HUGHES"
which is used to identify applicant's services.
Under the circumstances, the Board fully
agrees with the Examining Attorney that the
term "PHOTOX," as used in the specimens
of record and in 'the other materials of record,
serves only to identify a process but not a
service and hence is not registrable.
Decision
The refusal of registration under Section
2(d) of the Act is reversed. The refusal of
registration on the ground that the subject
matter for registration does not function as a
se.rvice mark to identify applicant's services
but, rather, identifies a process, is affirmed.
In re Metriplex Inc., 23 U.S.P.Q.2d 1315 (1992)
23 U.S.P.Q.2d 1315 (Trademark Tr. & App. Bd.), 1992 WL 169149
Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
IN RE METRIPLEX, INC.
Serial No. 73/836, 597
May 5, 1992
*1 Jerry Cohen of Perkins Smith and Cohen for applicant.
Craig D. Taylor, Senior Examining Attorney
Law Office 12
(Deborah S. Cohn, Managing Attorney)
Before Rice, Seeherman and Hanak
Members
Opinion by Seeherman
Member
Metriplex, Inc. has applied to register the mark GLOBAL GATEWAY for the service of “transmission of data in various fields
(commercial as well as personal) to subscribers to the service by means of information entry software, radio data transmission
and portable terminal interface with such subscribers.” 1 Registration has been refused by the Examining Attorney on the basis
that the specimens submitted by applicant are unacceptable as evidence of actual service-mark use because they do not refer
to the services identified in the application.
Applicant has appealed.
The specimens at issue (reproduced below) are, according to applicant's declaration, an example of a computer screen display
that appears on a computer terminal in the course of applicant's rendering of the service. Applicant states that this screen is
observed by potential subscribers in the course of demonstrations of applicant's services, and by customers who encounter the
screen on the terminal as the service is being rendered.
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
We reverse the refusal to register. The gravamen of the Examining Attorney's complaint about the specimens is that they do not
make reference to the service identified in the application, specifically, they do not indicate that GLOBAL GATEWAY is used
in connection with the transmission of data to subscribers. The only authority the Examining Attorney has cited in support of his
position is Intermed Communication, Inc. v. Chaney, 197 USPQ 501, 507 (TTAB 1977). However, that inter partes proceeding
involved the question of whether the applicant had made use of its service mark prior to filing its application, and the Board
found that use of the mark in a progress report which, in effect, announced future plans to use a mark, did not constitute service
mark use. Thus, we do not view the language in that case--“A specimen which shows an alleged mark but which makes no
reference to the services offered or performed thereunder is not evidence of service mark use”--as requiring that specimens
must, in all cases, contain a statement as to the nature of the services in order to be acceptable.
The Trademark Manual of Examining Procedure, Section 1301.04, makes clear that, because by its very nature a service mark
can be used in a wide variety of ways, the types of specimens which may be submitted as evidence of use are varied. Some of
the specimens which the Board has found to be acceptable are a photograph of chain-link fences, where the mark sought to be
registered consisted of alternately colored strands of wire arranged in the fencing, for the service of renting chain-link fences,
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
1
In re Metriplex Inc., 23 U.S.P.Q.2d 1315 (1992)
In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986); and a photograph of a person wearing a bird costume, where the
asserted mark was a design of that bird costume, for entertainment services, namely personal appearances, clowning, antics,
dance routines and charity benefits, In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984). Although the specimens
in these cases did not refer explicitly to the services identified in the respective applications, they were found to show use of
the mark in the rendering, i.e., sale, of the services.
*2 In the same way, the specimens herein show use of the mark in the sale of the services. As applicant explained in its
declaration, the specimens show the mark as it appears on a computer terminal in the course of applicant's rendering of the
service. There is no question that purchasers and users of the service would recognize GLOBAL GATEWAY, as it appears
on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer
terminal. Thus, the printouts constitute specimens of the mark as used in the sale of the services. Trademark Rule 2.58(a).
It appears to us that the Examining Attorney may have been misled by the language in the Trademark Manual of Examining
Procedure that “letterhead stationery or business cards bearing the mark may be accepted if the services are clearly indicated
thereon.” Section 1301.04. Normally, because of the intangible nature of services, it is not possible to affix a mark to them, as
can be done in the case of goods. As a result, Section 45 of the Trademark Act defines service mark use as occurring when a
mark “is used or displayed in the sale or advertising of services and the services are rendered in commerce....” In most cases,
the specimens submitted to evidence service mark use are advertising materials. Letterhead stationery and business cards are
deemed to fall into the category of advertising matter if they contain a reference to the services.
Here, however, as in the cases noted above, we have a situation where the services are rendered through the means of a tangible
item, namely, a computer terminal, so that the mark can appear on the computer screen, and the specimens show such use.
Because the specimens show use of the mark in the rendering or selling of applicant's services, not in the advertising thereof,
the requirements specific to specimens which are advertising are not applicable.
Decision: The refusal of registration is reversed.
J. E. Rice
E. J. Seeherman
E. W. Hanak
Members, Trademark Trial and Appeal Board
Footnotes
Application Serial No. 73/836, 597, filed November 6, 1989 and asserting first use and first use in commerce as early as July 31,
1
1989. It is noted that, in the Examining Attorney's brief, he has recited the identification of services somewhat differently from the
language quoted above. However, since the quoted language is taken from applicant's response filed May 16, 1991, and the Examining
Attorney's Office Action following that response stated that “the amended recitation of services is acceptable,” we have treated this
as the actual identification.
23 U.S.P.Q.2d 1315 (Trademark Tr. & App. Bd.), 1992 WL 169149
End of Document
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
2
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Mailed:
July 14, 2006
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re PrintCo., Inc.
________
Serial No. 78155673
_______
Miriam D. Trudell of Sheridan Ross P.C. for PrintCo., Inc.
Paul Fahrenkopf, Trademark Examining Attorney,
Law Office 101 (Ronald R. Sussman, Managing Attorney).
_______
Before Grendel, Walsh and Cataldo, Administrative Trademark
Judges.
Opinion by Cataldo, Administrative Trademark Judge:
An application was filed by PrintCo., Inc. to register
the mark ENKLAVVOICE in standard character form on the
Principal Register for the following services, as amended:
advertising and marketing services for others,
namely providing a website which permits users to
create, populate, authorize and manage databases
of sales data and information, marketing data and
information, product specifications; product
pricing, catalog data, and related sales and
marketing content; providing a website that
allows users to organize, aggregate and summarize
databases of sales and marketing data,
Ser No. 78155673
advertising text and advertising images and
graphics and administer content approval.”1
The trademark examining attorney initially rejected
the specimen submitted with applicant’s statement of use on
the ground that it fails to indicate use of the mark as a
service mark in connection with the recited services.
When the examining attorney made final the requirement
that applicant submit an acceptable specimen of use,
applicant appealed.
Applicant and the examining attorney
filed main briefs and applicant filed a reply brief.2
An
oral hearing was not requested.
Applicant asserts that its specimen of use “consists
of two pages from Applicant’s website, which advertises and
describes Applicant’s services;” (Applicant’s brief, p. 1)
that, specifically, applicant’s specimen displays its
ENKLAVVOICE mark and indicates that the services may be
used to “[c]reate, populate, approve and manage a digital
warehouse of sales and marketing information.
ENCLAVVOICE
aggregates all forms of text, data, and images and
administers content approvals.”
(Applicant’s brief, p. 2,
1
Application Serial No. 78155673, filed August 19, 2002, based
on applicant’s allegation of a bona fide intent to use the mark
in commerce under Section 1(b) of the Trademark Act.
2
The instant application was reassigned to the above noted
examining attorney subsequent to the briefing of the matter
currently under consideration on appeal.
2
Ser No. 78155673
quoting from specimen)
Applicant explains that it provides
access to its Internet website to allow customers to
subscribe to the ENKLAVVOICE service to create their own
advertisements; but that applicant does not provide its
customers with software in any form.
Applicant argues that
its specimen provides information about its recited
services; that it is not necessary for its specimens to
specifically indicate that its services are web based;
that, nonetheless its specimen informs potential customers
that its services are provided via an Internet website; and
that, as a result of the foregoing, its specimen is
sufficient to indicate use of its ENKLAVVOICE mark as a
service mark in connection with its recited services.
Applicant argues in addition that the same advertisement
submitted with its statement of use previously has been
accepted as a specimen of use for applicant’s other marks
appearing thereupon.
The examining attorney maintains that applicant’s
specimen displays its proposed mark “in a list of features
of an ‘enterprise content management and cross-media
publishing system’ dubbed ‘enklavTDW;’” (Examining
attorney’s brief, p. 3) that each of the “enklav” prefixed
terms listed in applicant’s specimen, including
“enklavVOICE,” merely identifies a feature of the
3
Ser No. 78155673
“enklavTDW” system; that “use of the mark to distinguish
this feature of the applicant’s overall system from other
features does not serve to identify and distinguish the
provision of a website…;” (Examining attorney’s brief, p.
4) and that, as a result, applicant’s mark appears to
identify a featured element of a publishing system.
The
examining attorney argues that it is unclear from its
specimen whether applicant is offering a product or a
service; that it is further unclear how a consumer would
engage applicant in the provision of any service; that in
addition, there appears to be no explanation of applicant’s
services beyond the information featured on its Internet
website; and that potential customers would need to
undertake additional actions, such as contacting applicant
or downloading a brochure, in order to understand the
services offered by applicant.
The examining attorney
argues that, as a result, even though the submitted
specimen displays applicant’s proposed mark, it fails to
demonstrate use of ENKLAVVOICE as a service mark in
connection with the recited services.
Applicant contends in reply that its specimens clearly
indicate that a potential customer can contact applicant
for a demonstration of the services; that its specimen is
an Internet advertisement, visible to anyone with Internet
4
Ser No. 78155673
access; and that the specimen indicates that applicant’s
services are available through a hosted, secure Internet
portal.
Finally, applicant argues that its specimens offer
a description of the services immediately following its
mark; and that, as a result, its specimens offer a direct
association between its ENKLAVVOICE mark and the services
identified thereby.
Trademark Rule 2.88 provides, in part, that a
statement of use must include one specimen showing the mark
as used on or in connection with the sale or advertising of
the goods or services in commerce.
§2.88(b)(2).
See 37 C.F.R.
Trademark Rule 2.56(b)(2) specifies that a
"service mark specimen must show the mark as actually used
in the sale or advertising of the services."
§2.56(b)(2).
See 37 C.F.R.
Section 45 of the Trademark Act provides, in
part, that a service mark is used in commerce "when it is
used or displayed in the sale or advertising of services
and the services are rendered in commerce...."
See 15
U.S.C. §1127.
To be an acceptable specimen of use of the mark in the
sale or advertising of the identified services, there must
be a direct association between the mark sought to be
registered and the services specified in the application,
and there must be sufficient reference to the services in
5
Ser No. 78155673
the specimens to create this association.
See In re
Monograms America Inc., 51 USPQ 1317 (TTAB 1999).
It is
not enough that the term alleged to constitute the mark be
used in the sale or advertising; there must also be a
direct association between the term and the services.
See
In re Compagnie Nationale Air France, 265 F.2d 938, 121
USPQ 460 (CCPA 1959); In re Johnson Controls Inc., 33
USPQ2d 1318 (TTAB 1994); and Peopleware Systems, Inc. v.
Peopleware, Inc., 226 USPQ 320 (TTAB 1985).
Adair, 45 USPQ2d 1211 (TTAB 1997).
See also In re
The mark must be used
in such a manner that it would be readily perceived as
identifying the source of such services.
In re Advertising
& Marketing Development, Inc., 821 F.2d 614 2 USPQ2d 2010
(Fed. Cir. 1987); and In re Metrotech, 33 USPQ2d 1049
(Com’r Pats. 1993).
See also TMEP §1301.04 (4th ed. Rev.
2005).
Thus, the issue before us is whether the specimen of
record creates a direct association between applicant’s
ENKLAVVOICE mark and the services specified in the
application.
The determination of whether applicant's
specimen shows the ENKLAVVOICE mark in connection with the
sale or advertising of these services necessarily requires
a consideration of the specimen.
The original specimen submitted for applicant's
6
Ser No. 78155673
services, reproduced below, is a web page from applicant's
website on the Internet.
7
Ser No. 78155673
Our primary reviewing court has held that a "service"
is "the performance of labor for the benefit of another."
See In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971
(Fed. Cir. 1985).
The recited services involved herein
clearly are a "service" under this definition, and we will
presume that applicant in fact renders such services.
However, the issue in this case is not whether applicant’s
activities constitute "services," or whether applicant in
fact provides those services.
Rather, the issue is whether
the specimens of record demonstrate use of the mark as a
service mark for those services.
As noted above, Trademark Rule 2.56(b)(2) provides
that "[a] service mark specimen must show the mark as
actually used in the sale or advertising of the services."
When appropriate, the Board has been fairly flexible in
accepting service mark specimens.
See In re Ralph Mantia
Inc., 54 USPQ2d 1284 (TTAB 2000); and In re Metriplex Inc.,
23 USPQ2d 1315 (TTAB 1992).
In this case, we first find that the specimen
submitted by applicant with its statement of use displays
its ENKLAVVOICE mark.
Inasmuch as applicant applied for
its mark in standard character form, the mark as it appears
in stylized form in its specimen of use is considered to
8
Ser No. 78155673
agree with the mark as it appears in its drawing.3
C.F.R. §252(a).
See TBMP also TBMP §807.03(e).
See 37
We further
find that applicant's specimens are advertisements because
they show the requisite direct association between the mark
and the activities described thereafter.
Cf. In re Adair,
supra; and In re Johnson Controls, Inc., supra.
Specifically, the specimen indicates in a paragraph
immediately following the mark that a customer may utilize
ENKLAVVOICE to “[c]reate, populate, approve and manage a
digital warehouse of sales and marketing information,” and,
further, that ENKLAVVOICE “aggregates all forms of text,
data, and images and administers content approvals.”
As
noted above, applicant’s recited services include
advertising and marketing services for others, namely,
providing a website that permits or allows users to perform
many of the activities described in its specimen.
A
customer or potential customer viewing applicant’s specimen
would readily perceive the ENKLAVVOICE mark as identifying
the source of applicant’s website that allows users to
engage the advertising and marketing services described
therein.
As a result, applicant’s specimen creates a
3
Effective November 2, 2003, subsequent to the filing date of
the involved application, Trademark Rule 2.52, 37 C.F.R. §2.52,
was amended to replace the term "typed" drawing with "standard
character" drawing.
9
Ser No. 78155673
direct association between the ENKLAVVOICE mark and
applicant’s recited services.
Contrary to the examining
attorney's contentions, we find that the website does not
merely describe features of a larger system, but rather
describes, inter alia, the recited services available by
means of its website under the applied-for mark.
Thus, we
conclude that the specimen of record is adequate to support
the use of the mark in connection with the identified
services.
Decision: The refusal to register on the ground that
the specimen is unacceptable evidence of service mark use
in connection with the identified services is reversed.
10
In re Ralph Mantia Inc.
1284
Supreme Court perceives them to be in its
analysis .... This latitude extends to_the
Supreme Court's restatment of the issue
or issues and the manner in which the
answers are to be given ....
Martinez v. Rodriquez, 394 F.2d 156, 159
n.6 (5th Cir. 1968). The entire record in this
case, together with copies of the briefs of the
parties, is transmitted herewith.
III.
We CERTIFY the state law question of
whether a non-resident is subject to personal
jurisdiction under O.C.G.A. § 9-10-91(2)
when he improperly discloses another nonresident's trade secret to a federal agency at
its Georgia office. We WITHHOLD any
decision about the district court's dismissal
of the case for want of personal jurisdiction.
QUESTION CERTIFIED.
54 USPQ2d
service mark for commercial art design services. Applicant appeals from examiner's requirement that applicant submit subst~tute
specimens showing use of mark for ide~tijied
services, as well as affidavit or declaration in
support of substitute specimens. Reversed.
B. Joseph Schaeff, of Killworth, Gottman,
Hagan & Schaeff, Dayton, Ohio, ·for
Ralph Mantia Inc.
Before Quinn, Hairston and Walters, administrative trademark judges.
Hairston, administrative trademark judge.
Ralph Mantia, Inc., doing business as Ze
Design, seeks to register the mark set forth
below for "commercial art design services."
The intent-to-use application was filed on
April 7, 1995. The word "design" has oeen
disclaimed apart from the mark as shown.
U.S. Patent and Trademark Office
Trademark Trial and Appeal Board
In re Ralph Mantia Inc.
Serial No. 74/657,328
Decided February 25, 2000
Released March 22, 2000
TRADEMARKS AND UNFAIR TRADE
PRACTICES
1. Registration and its effects - Federal
registration - Procedure, form, and
content - Specimens (§315.0303.02)
Specimens filed with application to register trademark for design services are acceptable evidence of service mark use, since
Trademark Manual of Examining Procedure
§ 1301.04 does not require that specimens
such as letterhead stationery, envelopes, and
business cards indicate specific nature of
applicant's services, since it is sufficient that
word "design" appears on specimens, and it
is not necessary that specific field of design,
namely, commercial art, also appear thereon, and since word "design" alone is sufficient to create in minds of purchasers association between mark and applicant's
commercial art services.
Appeal from refusal of application for
registration of servke mark (Andrew P. Baxley, examining attorney; Mary Frances
Bruce, managing attorney).
Intent-to-use application of Ralph Mantia
Inc., d/b/a Ze Design, for registration of
On September 24, 1996 applicant filed a
statement of use pursuant to Trademark
Rule 2.88 wherein he states that "[t]he mark
is used on letterhead [stationery], in advertising literature, business cards and other
ways common in the industry." Applicant
submitted as specimens letterhead stationery, an envelope and a business card.
The Trademark Examining Attorney, in
an Office Action mailed March 28, 1997,
stated that:
The specimens do not show use of the
mark for any services identified in the
statement of use. Specimens are unacceptable if they do not show use of the service
mark in relation to the identified serviee.
The specimens must show use of the mark
"in the sale or advertising of services."
(citations omitted).
The Exa
applican
the JJlai
a plican
or decla
pecime
ppli
sponse t
pecimem
all prom
However
tion, app
pecimen
site and
The E
Action n
that, wh
peared to
use of th
services,
"supplerr
affidavit ,
mens wa
54 USPQ2d
In re Ralph Mantia Inc.
The Examining Attorney then required that
applicant submit specimens showing use of
the mark for the identified services. Also,
applicant was required to submit an affidavit
or declaration .jn support of the substitute
specimens.
Applicant, in its September 30, 1997 response to the Office Action, argued that the
specimens were acceptable because "[they]
all prominently feature the word 'design.' "
However, to further assist in the examination, applicant submitted as "supplemental"
specimens printouts from applicant's web
site and a post card.
The Examining Attorney, in an Office
Action mailed February 12, 1998, stated
that, while the later-filed specimens appeared to be acceptable in that they showed
use of the mark in relation to the identified
services, they were "substitute" rather than
"supplemental" specimens and, therefore, an
affidavit of declaration supporting the specimens was necessary. The Examining Attor-
1285
ney made final the requirement for an ,appropriate affidavit/declaration.
Applicant, on August 17, 1998, filed an
appeal and request for reconsideration. In its
request for reconsideration, applicant argued
that the original specimens were indeed acceptable and that along with the later-filed
specimens, there could be no doubt that
applicant renders commercial art design
services.
The Examining Attorney, in an Office
action mailed December 30, 1998, continued
to maintain that the original specimens were
unacceptable and that an affidavit/declaration in support of the later-filed specimens
was necessary.
Both applicant and the Examining Attorney have filed briefs in connection with the
appeal, but no oral hearing was requested.
We turn first to the issue of whether the
specimens filed with the application are acceptable. The relevant portions of applicant's
letterhead, envelope and business card are
reproduced below.
1286
P.aquet.te v. Twentieth C~ntury Fox Film Corp.
In support of his position that -the specimens are unacceptable, the Examining Attorney relies on TMEP Section 1301.04
which states, in relevant part, that:
Letterhead stationary' or business cards
bearing the mark rna)' be accepted if the
services are clearly indicated thereon.
(emphasis added) . . . However, letterhead or business cards which bear only
the mark and a company name and address are not adequate specimens (unless
the mark itself has a descriptive portion
which identifies the service), because
such items are not evidence that the mark
is used in the sale or advertising of the
particular services recited in the application. (citations omitted)
The Examining Attorney contends that
the nature of applicant's services are not
clearly indicated on the specimens filed with
the application and, thus, the specimens are
unacceptable. In particular, the Examining
Attorney argues that: Although design services of some sort are
indicated by the specimens, the examining attorney submits that one must inquire further to determine the field or
industry in which the applicant renders
its design services. Based on the specimens of record, the examining attorney
submits that one could not determine
without further inquiry whether the applicant designs commercial art, computer
software, clothing, architecture, landscaping, etc.
(Brief, p. 5)
Applicant, however, contends that neither
the Lanham Act nor the Trademark Rules
require tbat specimens such as letterhead
stationary specifically spell out the type of
services rendered. Applicant argues that it
is enough that the letterhead stationery,
envelope and business card contain the word
"design" - because that is applicant's
business.
(1) In this case, we agree with applicant
that the specimens filed with its application
are acceptable evidence of service mark use.
We do not view TMEP Section 1301.04 as
requiring that specimens such as letterhead
stationery and the like indicate the specific
nature of an applicant's services. Stated
differently, in this case, it is enough that the
word "design" appears on applicant's letterhead stationary, envelope and business card.
It is not necessary that the specific field of
design, i.e., commercial art, also appea"r
thereon. Here, the word "design" alone is
sufficient to create in the minds of purchasers an association between the mark and
applicant's commercial art services.
54 USPQ2d
Without deciding the question of whether
the later-filed specimens are substitute or
supplemental specimens, we nonetheless
note that the Examining Attorney has indicated that these additional materials demonstrate that applicant renders commercial
art design services. We agree with this finding inasmuch as the wording "a creative
graphic design studio" appears thereon.
Thus, there is no question that applicant
renders the particular services identified in
its application.
Decision: The refusal to register is
reversed.
U.S. District Court
Southern District of New York
Paquette v. Twentieth Century Fox Film
Corp.
No. 99 Civ. 10592 (JSM)
Decided February 29, 2000
COPYRIGHTS
1. Elements of copyright - Federal preemption - In general (§205.0801)
TRADEMARKS AND UNFAIR TRADE
PRACTICES
Infringement; conflicts between marks Passing off (§335.07)
Plaintiffs' Lanham Act claim is not impermissible attempt to convert copyright claim
into claim for false designation of origin,
since reproduction of work with false representation as to its creator may support finding of false designation of origin if defendant
failed to credit original creator, and since
trier of fact in present case could find that it
is misleading to represent defendant writer
as creator of television program at issue
without giving adequate recognition to role
that plaintiffs played in its creation.
2. Infringement; conflicts between marks Passing off (§335.07)
Defendants' contention that "created by"
credit given defendant writer on television
program is required by contract between
defendant film company and Writers Guild
of America (WGA) does not provide defense
to plaintiffs' claim for false designation of
origin under Lanham Act, since plaintiffs
are not members ofWGA and are not bound
by its contract, and since, if listing of credits
violates plaintiffs' rights under Lanham Act,
222 USPQ
911
In re Red Robin Enterprises, Inc.
pute, nor is it controlling on the issue of
likelihood of confusion.
In view of the foregoing, we find no likelihood of confusion as to source from the contemporaneous use of the respective marks on
the services and conclude that the opposition
must fail.
Decision: The opposition is dismissed.
5. Applications to register content (§67.135)
Form and
Drawings (§67.30)
Photographs of applicant's costume mark
on garbed performer or model, with evidence
of prior registration for collateral use, are
adequate service mark specimens notwithstanding that while in use costume serves as
critical component or element of entertainment services provided by applicant as well as
identification of applicant's source of such
entertainment services.
6. Pleading and practice in Patent Office
-In general (§67.671)
Patent and Trademark Office
Trademark Trial and Appeal Board
In re Red Robin Enterprises, Inc.
Decided June 22, 1984
TRADEMARKS
I)
[l
to,
IS
1. Marks and names subject to ownership
-
Form and substance (§67.513)
Particular costume design might function
as service mark for individual or firm that
provides entertainment services, regardless of
whether services are performed by individuals
wearing distinctively designed costume; there
is no reason why costume design cannot function as service mark and, in addition, cannot
so function while being worn by individual
who is either soliciting or advertising such
services or actually performing them.
2. Applications to register content (§67.135)
Form and
of
Photographs are proper as specimens for
mark actually being used in three-dimensional form.
a-
3. Marks and names subject to ownership
-Service marks (§67.525)
n
Service mark must be used in sale or advertising of services; performance of entertainment services may properly be viewed as
element of "sale" thereof within meaning of
Trademark Act.
r-
nt
ir
m
4. Marks and names subject to ownership
- In general (§67.501)
Fact that mark has been registered for
other products is prima facie evidence that it
is capable of recognition as trademark and
therefore of being regarded as indication of
origin.
Proper method for introducing third-party
registrations into evidence in ex parte proceeding is by filing copies of registrations.
7. Pleading and fractice in Patent Office
-In genera (§67.671)
Each case must be decided on its own facts.
Appeal from · Trademark Examining
Attorney.
Application for registration of service mark
of Red Robin Enterprises, Inc., Serial No.
321 ,236, filed July 29, 1981 . From decision
refusing registration, applicant appeals.
Reversed.
Seed , Berry, Vernon & Baynham, Seattle,
W ash., for applicant.
Before Skoler,
Members.
Rice,
and
Krugman,
Skoler, Member.
This is an appeal from the refusal of the
Trademark Examining Attorney to register a
design of a bird costume as portrayed by the
following application drawing:
for entertainment services, · namely personal
appearances, clowning, antics, dance routines
and charity benefits (Serial No. 321 ,236 filed
912
In re Red Robin Enterprises, Inc.
July 29, 1981, and alleging first use in August of 1980).
The ground for refusal is that the design
shows only the service provided and does not
function as a designation of origin which
would identify applicant as a source of the
named entertainment services and distinguish
them from similar services provided by others.
It is not entirely clear to the Board whether
the refusal was premised on the assumption
that (i) a costume worn by an entertainer
could not, in that manner, function as a
service mark, or (ii) the applicant's specimen
of use (a photograph of a person wearing a
costume of the design sought to be registered)
was an improper specimen which portrayed
only an entertainer in action (or, more appropriately in this case, garbed and ready for
action) and failed to show employment of the
costume design as a service mark within the
definitional parameters of Section 45 of the
Trademark Act, i.e., in the context of "the
sale or advertising of services to identify the
services of one person and distinguish them
from services of others." 1 Accordingly, the
Board will consider the general registrability
of the mark before us (noting that we have
not had occasion to deal with registration of
costume marks in previous decisions) and also
the adequacy of applicant's submitted specimen of use.
In reaching his conclusion as to nonregistrability, the Examining Attorney relied
heavily on the state court case of KGB , Inc. v.
Giannoulas, 211 USPQ 285 (Cal. App., 4th
Dist., 1980), a breach of contract, unfair
competition, and service mark infringement
case in which a radio station sought to enjoin
a former employee from performing as a
clown dressed in a chicken costume. The trial
court issued the requested injunction to cover
not only the particular costume design (with
KGB logo) that the clown wore when performing as an employee, but also to proscribe
appearance in any kind of chicken costume.
The appellate court, in its opinion, actually
upheld the injunction to the extent that it
1
In the Examiner's response to a reconsideration request in which the refusal was explicitly
made final "on the ground that the design merely
shows the service itself and does not identify the
origin of the service" (Office action, August 19,
1983), the Examining Attorney specifically withdrew previous Examiner findings of defective specimens and requests for substitute specimens (office
actions, December 9, 1981, and October 6, 1982).
Nevertheless, the Examining Attorney continued to
maintain in his brief that the specimens of record
"simply do not support registrability of the bird
costume in connection with the services claimed."
222 USPQ
prohibited performance in the KGB chicken
costume ("we * * * recognize KGB's probable rights in that particular design") 2 but
refused to bar the terminated employee from
performing in other chicken costumes, declaring among other things that "a person appearing in a chicken costume cannot be a
service mark" and that "to be entitled to such
[service mark] protection, the mark must be
stationary and unchanging." 211 USPQ at
291.
(1] We need not disagree with the court's
apparent conclusion in the KGB ca~e that
"chicken costumes" per se are generic or
functional entertainment devices that no entity should be able to monopolize, in order to
nevertheless conclude that a particular costume design (as, for example, in that case, the
KGB version with logo) might very well
function as a service mark for an individual
or firm which provides entertainment services, this regardless of whether the services
are performed by individuals wearing the
distinctively designed costume. That is, we see
no reason why a costume design cannot function as a service mark and, in addition, cannot
so function while being worn by an individual
who is either soliciting or advertising such
services or actually performing them.' In
either case, if the costume in question is
sufficiently distinctive (and we believe applicant's costume with its " RR" logo and other
unique features meets this requirement), it
can and will serve to indicate the sponsorship
or source of such services. That was the clear
conclusion in Dallas Cowboys Cheerleaders,
Inc. v. Pussycat Cinema, Ltd., 201 USPQ
740 (S.D.N.Y. 1979), an infringement action
where the court stated:
It is true, of course, that the Dallas Cheerleaders uniform serves the function of
clothing to cover the body in such a way as
to permit the cheerleading and dance routines to be performed. However, the specific elements of the uniform - their color,
design, and ornamentation - are distinctive and arbitrary and thus susceptible of
becoming a valid trademark and service
mark. Cf. Mogen David Corp., 328 F.2d
925, 140 USPQ 575 (C.C.P .A. 1964): Application of World's Finest Chocolate, Inc.,
2
211 USPQ at 289.
' The concept of a mark for a product based on
the shape or design of the product itself is, of
course, not unknown to the trademark law. See In
re Morton-Norwich Products, Inc., 213 USPQ 9,
12 (CCPA 1982). This is the case with configuration marks in which the shape of a product or its
container is the mark itself and in which the
configuration functions to identify both source and
product at the same time.
222 USPQ
In re Red Robin Enterprises, Inc .
474 F.2d 1012, 177 USPQ 205 (C.C.P.A.
1973); Fotomat Corp. v. Cochran, 437 F.
Supp. 1231, 194 USPQ 128 (D. Kansas
1977). The specific uniform selected and
used by plaintiff is only one of many which
can be used for cheerleaders. [201 USPQ at
746]
and went on to find a valid common law
service mark for entertainment services in the
Dallas cheerleaders costume design which
had been misappropriated by the defendant.•
The foregoing principles are consistent
with a number of holdings of the Board and
its reviewing courts to the effect that marks
can serve the dual purpose of identifying
source and serving as an integral and necessary component of the goods or services to
which applied. See, e.g., In re DC Comics,
Inc., 215 USPQ 394 (CCPA 1982) (drawings
of fictional comic characters held to function
as trademarks for toy doll figurines of such
characters); In re Penthouse International
Ltd., 195 USPQ 698 (CCPA 1977) (design of
key may serve as trademark for jewelry, although jewelry product itself includes threedimensional portrayals of mark); In re Paramount Pictures Corp., 213 USPQ 1111
(TTAB 1982) (television character names determined to serve as a trademark although
used and presented as major ornamentation
for the decalcomania goods involved; In re
Florida Cypress Gardens, Inc., 208 USPQ
288 (TTAB 1980) (designation consisting of
name of clown is registrable for entertainment services despite fact that name also
identifies a fictitious character played by performers in applicant's shows).
[2] As regards the question of whether
applicant's specimen of use (a photograph of
a person modeling the bird costume design for
which registration is here sought) is an acceptable specimen, ' the Examining Attor• The court's finding was premised on acquired
distinctiveness of the Dallas Cowboys cheerleader
costume whereas in this case, applicant has presumed that its chicken costume design with "RR"
logo is inherently distinctive (as indeed it seems to
be) and the Examining Attorney has raised no issue
of descriptiveness which would generate an inquiry
or the need for a showing as to acquired distinctiveness. Cf. DeCosta v. Columbia Broadcasting System, Inc., 186 USPQ 302, 314 (1st Cir. 1975)
(finding valid common law service marks in, among
other things, a cowboy costume design used for
non-profit appearances at rodeos and other public
events in sufficiently distinctive form that proof of
secondary meaning was not deemed essential).
' It has not been suggested that the fact that the
specimen is a photograph is a problem. It is accepted that photographs are proper as specimens for a
mark actually being used in three-dimensional form
as is the case here. Trademark Manual of Examining Procedure, Sec. 1301.08(b).
913
ney appears to take the view that a photograph of a person posing in the costume (in
what appears to be a locker or dressing room
or a passageway) shows only the service itself.
This is strange, since the lack of an audience
or some other performance context (e.g. stage,
parade, party presentation) makes it clear
that the service itself is not being performed
or portrayed in the specimen nor do we think
that the presence or absence of an "action"
background for the specimen photograph
would be a material distinction or factor in
evaluation of the specimen. We note, in any
event, applicant's statement that entertainment services were performed using its bird
costume/ logo design "moments after the submitted [specimen] photograph was taken."
Applicant has consistently maintained that
the service itself is not the costume per se but
rather an actor's performance of dances, comic routines or other entertainment activities
while garbed in that costume. We must agree.
Further, the application avers that the costume design is used in the "sale or advertising
of services rendered in interstate commerce"
and recites the manner of such use, i.e., as a
costume worn on the person. In essence, the
specimen portrays a form of use of the service
mark as an animate pictorial "sign." 6 That
it does not, on its face, reveal employment of
this sign in an actual sale or advertising
context is in our view not fatal just as a
specimen label or garment tag would not, on
its face, need to show actual affixation or
packaging use in connection with the goods
on which used. '
' In this regard, we note that the design and
specimen do not reveal any parts of a person or
performer but show, exclusively, the costume, i.e.,
shoes, socks, pants, blouse, comic claws, comic face
mask, and top hat.
7
The problem of a specimen that comprised an
important part of the product or service itself was
addressed by the Court of Customs and Patent
Appeals in In re Penthouse International Ltd. ,
supra, where the court criticized the Patent and
Trademark Office's rejection of bracelets to which
three-dimensional embodiments of applicant's
"key" mark were affixed as acceptable specimens,
stating:
"It is to be remembered that the present case
arises only because of the particular specimens
submitted by Penthouse. Had Penthouse submitted a box label, bearing the same mark and
useful on boxes containing the pendant actually
submitted, there would have apparently been no
refusal to register. The capacity of a mark to
indicate origin is not destroyed because the mark
appears as a charm on a bracelet instead of as a
symbol on the box which contains the bracelet."
[195 USPQ at 701]. Cf. In re Paramount Pictures Corp., supra, at 1114-15 (disapproving
notion that specimens consisting of other than the
914
In re Bankers Finance In vestment Management Corp.
(3] We are, of course, mindful of the statutory mandate that a service mark must be
" used in the sale or advertising of services."
While the record is not clear as to all uses,
other than use during the performance of
entertainment services, to which the mark has
been put, the rend.ition of such services, we
believe, properly be viewed as an element of
the "sale" th~reof within the meaning of the
Act and we so construe the "service mark"
definition in Section 45.'
(4] With respect to whether the costume,
so employed, would be perceived as a service
mark (and not merely as a comic character),
especially in light of the scanty details as to
use revealed by the record, we believe this
was a legitimate ·and important issue for the
Examining Attorney to raise. However, we
conclude that this problem is obviated by
applicant's evidence of its ownership of a preexisting registration of the identical mark for
restaurant services, (Reg. No. 1,234,998 issued April 12, 1983), thereby demonstrating,
on the facts of this case, that the mark's
distinctive features would be perceived as
more than a mere ornamental design. See in
re Paramount Pictures, Inc., supra at p. 1114
and In re Penthouse International,. Ltd.,
supra, at 700. As the court stated in the
Penthouse case, " That the mark has been
registered for other products is prima facie
evidence that it is capable of recognition as a
trademark and therefore of being regarded as
an indication of origin."
[5] For the foregoing reasons, we rule that
~he photographs of applicant's costume mark
on a garbed performer or model, as submitted
in this case and with evidence of prior registration for a collateral use, are adequate service mark specimens notwithstanding that
while in use, the costume serves as a critical
component or element of the entertainment
services provided by applicant (clowning, an-
T-shirt decals there involved would be a requisite for registrability).
In the Board's view, the foregoing analysis is
applicable not only to trademarks but is also pertinent to service marks where the mark (e.g., a
costume design as in the case at bar) serves both
source identification and service provision
functions.
• In "unilateral contract" type engagements,
where the services agreement is based on an invitation followed by acceptance and delivery via the
actual performance itself (a not uncommon form of
offer-acceptance arrangement for at least the charity engagements in applicant's description of services), the performance would clearly be part of the
"sale" of applicant's entertainment services, both in
practical and in strict legal terms.
222 USPQ
tics, dancing) as well as an identification of
applicant. (Red Robin Enterprises) as the
source of such entertainment services.
Decision
[6, 7] The refusal to register is reversed
and the mark shall be passed for
publication.'
Patent and Trademark Office
Trademark Trial and Appeal Board
In re Bankers Finance Investment
Management Corp.
Decided June 19, 1984
TRADEMARKS
1. Marks and names subject to ownership
- Descriptive - Misdescriptive or
not descnptive - Particular marks
(§67.5078)
"Bankers Finance" is not merely descriptive of services of providing and obtaining
funds for depository institutions through purchase, sale, or brokering of financial assets
and instruments.
2. In general (§67.01)
Uniform treatment under Trademark Act
Section 2(e)(1) of similar marks used on simi-
' The applicant, with its reconsideration request, submitted a list of costume mark registrations for entertainment services {over 50, most of
these football uniform designs) and copies of Official Gazette excerpts indicating publication for opposition and registration of a few of these marks.
The proper method for introducing third-party
registrations into evidence in a proceeding such as
this is by the filing of copies of the registrations.
See: In re Duofold, 184 USPQ 638 (TTAB 1974).
(Applicant did in fact submit a copy of its existing
registration of the same " RR" bird costume design
for restaurant services, namely, Registration No.
1,234,988.) In any event, in this particular case
even copies of the registrations themselves would
not have had much significance with respect to the
issues before us unless applicant had also submitted
copies of the specimens which served as a basis for
the registrations. As noted by the Examining Attorney, each case must be determined on its own facts.
IN RE RENAISSANCE ENERGY, LLC, 2007 WL 1580019 (2007)
2007 WL 1580019 (Trademark Tr. & App. Bd.)
THIS OPINION IS NOT A PRECEDENT OF THE TTAB
Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
IN RE RENAISSANCE ENERGY, LLC
SERIAL 78084358
May 25, 2007
*1 Garrett M. Weber of Lindquist & Vennum P.L.L.P. for Renaissance Energy, LLC
Laura G. Kovalsky, Trademark Examining Attorney
Law Office 110
(Chris A. F. Pedersen, Managing Attorney)
Before Drost, Taylor and Bergsman
Administrative Trademark Judges
Opinion by Bergsman
Administrative Trademark Judge:
Renaissance Energy, LLC filed an intent-to-use application for the mark LINK & SYNC, in standard character form, for services
ultimately identified as “energy usage management, namely, monitoring of load and generation of electricity.” 1 On June 10,
2005, applicant filed a Statement of Use, claiming March 16, 2004 as its date of first use anywhere and first use in commerce.
As its specimen of use, applicant submitted the following excerpt from a sales presentation:
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
1
IN RE RENAISSANCE ENERGY, LLC, 2007 WL 1580019 (2007)
Registration was refused on the ground that LINK & SYNC fails to function as a service mark. Sections 1, 2, 3, and 45 of the
Lanham Act, 15 U.S.C. § §1051, 1052, 1053 and 1127. The examining attorney contends that as displayed on the specimen,
LINK AND SYNC merely identifies a process or system, and would not be perceived as a service mark. In addition, the
examining attorney noted that the mark sought to be registered, LINK & SYNC, differed from the mark as shown on the
specimen, LINK AND SYNC.
In response to the refusal, applicant submitted a substitute specimen comprising an excerpt from an Executive Summary from
what appears to be a business plan or sales presentation. The substitute specimen references the “LINK & SYNC technology”
and the “LINK & SYNC solution.”
When the refusal was made final, applicant appealed. Both applicant and the examining attorney filed briefs. For the reasons
set forth below, we reverse the refusal to register contingent upon the receipt of a substitute drawing displaying the mark as
LINK AND SYNC. 2
Section 1 of the Lanham Act, 15 U.S.C. §1051, provides that “The owner of a trademark used in commerce may request
registration of its trademark on the principal register hereby established …”
Section 45 of the Lanham Act, 15 U.S.C. §1127, defines a service mark as “any word, name, symbol, or device, or any
combination thereof … to identify and distinguish the services or one person, including a unique service, from the services of
others and to indicate the source of the services, even if that source is unknown.”
While the Lanham Act does not define a service, the following criteria have evolved for determining what constitutes a service:
(1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than
the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with
the sale of the applicant's goods or the performance of another service. TMEP §1301.01(a)(4 th ed. April 2005). See also In
re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971, 973 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89,
90 (TTAB 1984).
*2 In the case sub judice, there is no issue that applicant is rendering energy usage management. The examining attorney does
not contest this. The examining attorney argues that the specimens do not show LINK AND SYNC or LINK & SYNC used
as a service mark. The first specimen merely “diagrams the process of the ‘Link and Sync Control Center”’ and the substitute
specimen references the “Link & Sync Technology.” The examining attorney contends that in neither case, do the specimens
show LINK & SYNC or LINK AND SYNC used to identify a service.
To determine whether LINK AND SYNC or LINK & SYNC function as service marks, we must examine the specimens. In re
Hughes Aircraft Co., 222 USPQ 265, 264 (TTAB 1984); In re Betz Paperchem, Inc., supra. In this regard, the CCPA developed
the following approach for determining whether a term used as the name of a process also functions as a service mark:
The requirement [of the Lanham Act] that a mark must be “used in the sale or advertising of services” to be registered as a
service mark is clear and specific. We think it is not met by evidence which only shows use of the mark as the name of a process
and that the company is in the business of rendering services generally, even though the advertising of services appears in the
same brochure in which the name of the process is used. The minimum requirement is some direct association between the
offer of services and the mark sought to be registered therefore.
In re Universal Oil Products Company, 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973).
With reference to the original specimen (shown above), LINK AND SYNC is displayed as “Link and Sync (tm) Operation” in
a sales presentation. The word “Operation” means “the state of being operative or functional,” 3 “a business,” 4 or “a course
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
2
IN RE RENAISSANCE ENERGY, LLC, 2007 WL 1580019 (2007)
or procedure of productive or industrial activity.” 5 The commercial impression created by the specimen is a “Link and Sync”
activity or service. If we substituted the word “Services” for “Operation” (i.e., “Link and Sync (tm) Services”), the commercial
impression engendered by the mark would be the same (i.e., Link and Sync Business or Link and Sync Activity”). In addition,
because of the position, prominence, and size of “Link and Sync,” it will be understood to be a service mark.
“Link and Sync” is directly associated with the energy management services as evidenced by the text in the lower right-hand
side of the specimen. That text reads as follows:
To monitor and control … both wind plant production and loads, Link and Sync [services] uses the following communication
mediums:
A. Power Systems Carrier
B. Copper and fiber leased telephone lines
*3 C. Microwave
D. Radio
In view of the foregoing, we find that the original specimen shows service mark use of “Link and Sync.” On the other hand, the
Executive Summary submitted as a substitute specimen does not evidence service mark use. In the Executive Summary, “Link
& Sync” identifies the method or process for energy management as shown by the use of the term “Link & Sync technology.”
The relevant portion of the Executive Summary is set forth below (emphasis added):
The Company's core objective is to optimize the amount of generation that can be interconnected to the delivery system, that
generation will be reliably scheduled and delivered to the target customer using the newly developed Link & Sync technology.
Renaissance Energy developed Link & Sync technology.
By using Link & Sync technology, which is a certified and tested application, Renaissance Energy can reliably maintain linkage
of dedicated generation to dedicated load …
Renaissance Energy's unique development and integration of Link & Sync technology brings to realization the core objectives
with a minimal amount of added infrastructure…. With Link & Sync technology, Renaissance Energy provides its customers a
competitive advantage in linking wind generation through the transmission and distribution system to the point of wind energy
use.
By providing the Link & Sync solution for power producers, utilities, and most importantly consumers, Renaissance Energy
makes wind generation appear dispacthable (sic). This dispatchability is at the core of the Link & Sync technology and will
be a real breakthrough for the electrical and energy industry.
As used in the Executive Summary, clients and prospective clients would not perceive “Link & Sync” to be a service mark. The
word “technology” means “a technological process, invention, method, or the like.” 6 When applicant uses the phrase “Link &
Sync technology,” it engenders the commercial impression of the “Link & Sync process.” The same holds true with respect to
the use of “Link & Sync solution.” The word “solution” means “a particular instance or method of solving; an explanation or
answer” 7 or “the method or process of solving a problem.” 8 When applicant uses the phrase “Link & Sync solution,” it, too,
engenders the commercial impression of the “Link & Sync process.” Accordingly, the Executive Summary is not an acceptable
specimen of service mark use.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
3
IN RE RENAISSANCE ENERGY, LLC, 2007 WL 1580019 (2007)
Decision: The refusal to register the mark is reversed contingent upon applicant filing a new drawing to amend the mark to
conform to the mark shown in the original specimen (i.e., LINK AND SYNC). Applicant is allowed thirty days from the
mailing date of this decision to file an amended drawing which conforms to the mark as used on the specimen found to display
acceptable service mark use.
Footnotes
Application Serial No. 78084358, filed September 18, 2001.
1
Because an ampersand (&) is a symbol for the word “and,” “Link and Sync” and “Link & Sync” are interchangeable. See In re Finlay
2
Fine Jewelry Corp., 41 USPQ2d 1152, 1154 (TTAB 1996)(“NY” and “New York” are interchangeable as having identical meaning).
Accord In re Strathmore Products, Inc., 136 USPQ 81, 82 (TTAB 1962)(GLISTEN and GLISS'N have the same meaning because
GLISS'N is merely a contraction of the word GLISTEN).
3
4
5
6
7
8
American Heritage Dictionary of the English Language (4 th ed. 2006). The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Dictionary.com Unabridged (V 1.1) from the Random House Unabridged Dictionary (2006).
Id.
Dictionary.com Unabridged (V 1.1) from the Random House Unabridged Dictionary (2006).
Id.
American Heritage Dictionary of the English Language (4 th ed. 2006).
2007 WL 1580019 (Trademark Tr. & App. Bd.)
End of Document
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
4
IN RE SOLUTIONS NOW, 1999 WL 670730 (1999)
1999 WL 670730 (P.T.O.)
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B.
Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
IN RE SOLUTIONS NOW
Serial No. 74/645,035
August 27, 1999
*1 Donald R. Piper, Jr. of Dann, Dorfman, Herrell and Skillman, P.C. for Solutions NOW.
Angela Lykos, Trademark Examining Attorney
Law Office 102
(Thomas Shaw, Managing Attorney).
Before Hanak, Hohein and Wendel
Administrative Trademark Judges.
Opinion by Hanak
Administrative Trademark Judge:
Solutions NOW (applicant) seeks to register UNBUNDLING for “technical consultation and research in the fields of
engineering and product development.” The intent-to-use application was filed on March 7, 1995. Subsequently, applicant filed
a statement of use alleging a first use date of January 28, 1996 and submitting three specimens of use.
The Examining Attorney refused registration pursuant to Sections 1, 2, 3 and 45 of the Trademark Act “on the basis that the
proposed mark merely identifies a process.” (Examining Attorney's brief page 1). When the refusal to register was made final,
applicant appealed to this Board. Applicant and the Examining Attorney filed briefs. Applicant did not request a hearing.
As the Examining Attorney acknowledges, if “the name of the process is used to identify both the process and the services
rendered by means of the process by the proprietor thereof, the designation may be registrable as a service mark.” (Examining
Attorney's brief page 3). This legal proposition was fully explained in In re Universal Oil Products, 476 F.2d 653, 177 USPQ
456 (CCPA 1973).
The key to understanding whether the term UNBUNDLING identifies (1) only a process and is thus not registrable, or (2)
identifies a service or a service and a process and is thus registrable must be determined by reviewing applicant's specimens
of use. In pertinent part, applicant's specimens read as follows:
Solutions NOW … has designed and developed a new process to help military scientists use their knowledge
and experience to create new strength in the commercial economy. … The first of these heretofore missing
links is a way to identify the know-how of the individual military technologist … The interview uncovers
the individual subject's way of knowing … rather than the components of an invention or the military task
on which the person worked. In this way the process of UNBUNDLING (SM) focuses on the individual
technologist.
Applicant has made of record evidence showing that it has marketed its services to private corporations as well as to various
components of the United States military, such as the Office of Naval Research.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
1
IN RE SOLUTIONS NOW, 1999 WL 670730 (1999)
We find that the specimens of use demonstrate that applicant is rendering a specific service under the mark UNBUNDLING.
Put quite simply, applicant's services consist of assisting military personnel in transferring their technical knowledge to the
civilian field.
We recognize that in its specimens of use, applicant itself has used the word “process.” However, applicant could have just as
easily used the word “service” in lieu of the word “process.” Thus, applicant could have stated in its specimen of use that it “has
designed and developed a new service to help military scientists use their knowledge and experience to create new strength in
the commercial economy.” Likewise, applicant could have said that “in this way the service of UNBUNDLING (SM) focuses
on the individual technologist.” To focus on applicant's use of the word “process” in lieu of the word “service” incorrectly
places form over substance. In any event, we believe that, at a minimum, applicant's mark UNBUNDLING identifies both a
process and a service, and thus pursuant to Universal Oil Products is registrable as a service mark.
*2 Decision: The refusal to register is reversed.
E. W. Hanak
G. D. Hohein
H. R. Wendel
Administrative Trademark Judges, Trademark Trial and Appeal Board
1999 WL 670730 (P.T.O.)
End of Document
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
2
428
In re Stafford Printers, Inc.
agreement cannot bestow "valid" ownership for purposes ·of registration. This
is a very narrow reading of the Scandinavian case, which has been interpreted as holding that ownership of a
trademark in the United States may be
based on a present assignment coupled
with an exclusive distributorship of a
product manufactured a b r o a d even
though the distributorship is terminable.
Certainly, there is nothing in the decision to indicate that the conclusion
reached would have been any different
if the exclusive distributorship had
been terminable at any time within the
twenty year period. In fact, if the examiner's position was the law, the
r e s u I t in the Scandinavian case
would have been different since, at the
end of the first twenty years, the distributor-assignee could not have renewed for another twenty year period
in view of the fact that the distributorship was set to expire within seven
years. To follow the examiner to his
ultimate illogical conclusion would be
to permit registration only to those
persons who can guarantee that the
mark would be in use for the entire
statutory period of registration. When
one realizes that only a percentage of
the marks registered in the Patent Office remain in use during the entire registration period, the fallacy of the examiner's reasoning becomes readily apparent._The statute, moreover, provides
conditions precedent to registration and
conditions subsequent such as abandonment, non-use, and the like only as
grounds for cancelation of a registration after issuance.2 The conditions
precedent are use and ownership at the
time of the filing of the application, and
it is apparent that applicant has met
both requirements. Jt is well settled, moreover, with respect to a transfer of
property and contract rights that an
obligation to reassign on the happening of a condition subsequent does not
vitiate the effectiveness or completeness
of the present transfer. Section 150 of
the Restatement of Contracts sets forth
the applicable law as follows:
"An assignment is not ineffective
because it is conditional, revocable
or voidable by the assignor for
lack of consideration or for other
reason, or because it is ·within the
provisions of a Statute of Frauds."
It is therefore concluded that appli2 In this regard, it is noteworthy that
a registratlion can be cancelled under Section 8 of the Statute at the end of the
sixth year of registration in the absence
of a showing of continued use.
153 USPQ
cant, by virtue of its exclusive dealership agreement, is the owner for purposes of registration of the mark
"JIFFY-POTS" for peat moss pots in
the United States.
Decision
The refusal of registration is reversed.
Patent Office Trademark Trial and
Appeal Board
In re STAFFORD PRINTERS, INC.
Decided Apr. 18, 1967
TRADEMARKS
1. Marks and names sutject to ownership Service marks (§ 67.525)
Words and phrases (§ 70.)
Term "process" can encompass a
service; fact that "process" is used in
phrase "Printed By STAFFORDBLEND
Process" on specimens does not ipso
facto mean that arbitrary mark ("Staffordblend") used in conjunction therewith designates a process and not more;
"Staffordblend" is registrable as service mark since applicant renders a service of printing, the particular process
of printing being performed only by applicant; mark is placed on tags, which
are attached to textiles printed by applicant; specimens show use of "Staffordblend" to identify applicant's service.
Appeal from Examiner of Trademarks.
Application for registration of service mark of Stafford Printers, Inc., Serial No. 170,353. From decision refusing
registration, a p pI i c ant appeals. Reversed.
PETER L. COSTAS, Hartford, Conn., for
applicant.
Before W ALDSTREICHER, LEFKOWITZ, and
SHRYOCK, Members.
W ALDSTREICHER, Member.
An application has been filed to register "STAFFORDBLEND" as a mark
for the service of "printing of textiles".
Use since January 26, 1963 has been
alleged.
Registration has been refused for the
reason that the specimens do not evidence use of the subject matter of the
In re Stafford Printers, Inc.
153 USPQ
re-
application as a mark to identify a
service.
Applicant has appealed.
It is the examiner's position, notwithstanding that applicant does in fact
render the service claimed, that the
term "STAFFORDBLEND" as used on
the specimens submitted with the application merely designates a process;
and in one of the examiner's letters
it is indicated that since provision is
made in the Act of 1946 to register service marks and no provision is made to
register "process marks", the refusal
to register is proper.
'For the purpose of convenience the
acutal tag submitted with the application is hereby reproduced:
---.
,.
.......·•.l
~
I
ter25
PriMod tty
ST '- ~i='0'\y~t '~~o
!lrc-:~a
ND
!pSO
t.af-
PATTERN
ereClre;
errervcess
QUALITY
ap-
hich
COi.m NO.
'o rd:e.
YAROS
a de-
LOT 1:0.
~pli­
1ervSerISing
Re, f or
and
regmark
;iles".
been
r the
; evif the
..
The examiner in the examiner's statement indicates that the principal case
on the subject appears to be Ex parte
Phillips Petroleum Company, 100 USPQ
25 (Comr., 1953). Applicant indicates
that In re United Merchants and Manufacturers, Inc., 124 USPQ 11 (TT&A
Bd., 1959), is directly analogous to the
facts in the present case.
The first named case does not hold
for the proposition that a "process designation" is inherently unregistrable. In
said case the mark sought to be registered identified only a process in connection with which engineering services
were furnished, but under the mark
"PERCO". The Commissioner stated
that "In order to be registrable, a mark
must be used in the sale or advertising
429
of services rendered in commerce to
identify and distinguish the services of
one person from those of another.
Nothing in this record shows any such
use of 'Cycloversion'."
The Commissioner's conclusion would
indicate that the decision was not based
on the mere fact t h a t the term "Process" was used in conjunction with
"Cycloversion" and implies that if the
term had been used to identify a s~v­
ice it would have been registrable notwithstanding the use of the word
"Process".
[1] And what is a process? A process, inter alia, is a particular method
or system of doing something, producing something or a system used in a
manufacturing operation or other technical operation (See: Webster's New
International Directory, 3rd Edition,
1965). By its very meaning, the term
"process" can encompass a service. That
the term "process" is used on the specimen does not ipso facto mean that an
arbitrary mark used in conjunction
therewith designates a process and not
more.
In the instant case, applicant renders
a service of printing. The particular
process of printing is one actually performed by applicant and no one other
than applicant. The mark is placed on
tags, and the tags are attached to textiles which have been printed by applicant. We hold, therefore, that the
specimens do show use of "STAFFORDBLEND" to identify the service
rendered by applicant and that said
mark does constitute a service mark
within the meaning of the Act of 1946.
See: In re United Merchants and Manufacturers, Inc., supra.
Decision
The refusal to register is reversed.
Application of Universal Oil Products Co., 476 F.2d 653 (1973)
177 U.S.P.Q. 456
the name of the process is used. Lanham TradeMark Act, §§ 3, 45, 15 U.S.C.A. §§ 1053, 1127.
476 F.2d 653
United States Court of Customs and Patent Appeals.
Application of UNIVERSAL
OIL PRODUCTS COMPANY.
[3]
Minimum requirement for registration of a
service mark is some direct association between
the offer of services and the mark sought to be
registered therefor. Lanham Trade-Mark Act, §§
3, 45, 15 U.S.C.A. §§ 1053, 1127.
Patent Appeal Nos. 8906
and 8933. | April 19, 1973.
Consolidated appeals from decisions of Patent Office
Trademark Trial and Appeal Board affirming examiner's
refusal to register marks PACOL and PENEX for services.
The Court of Customs and Patent Appeals, Rich, J., held that
requirement that a mark must be used in sale or advertising
of services to be registered as a service mark is not met by
evidence which only shows use of mark as name of a process
and that the company is in business of rendering services
generally, even though the advertising of the services appears
in the same brochure in which the name of the process is used.
Trademarks
Services and Service Marks in General
[4]
Trademarks
Particular Goods, Services, or Other Subject
Matter
A mark or name used for a process is not
registrable as a service mark. Lanham TradeMark Act, §§ 3, 45, 15 U.S.C.A. §§ 1053, 1127.
Affirmed.
[5]
West Headnotes (7)
[1]
1 Cases that cite this headnote
[2]
A process, per se, is not a “service,” for purposes
of statute providing for registration of service
marks. Lanham Trade-Mark Act, §§ 3, 45, 15
U.S.C.A. §§ 1053, 1127.
Trademarks
Weight and Sufficiency
Record on consolidated appeals from decisions
of Patent Office Trademark Trial and Appeal
Board affirming examiner's refusal to register
marks PACOL and PENEX for services failed to
show that these marks had been used in sale or
advertising of services. Lanham Trade-Mark Act,
§§ 3, 45, 15 U.S.C.A. §§ 1053, 1127.
Trademarks
Particular Cases
Requirement that a mark must be used in sale
or advertising of services to be registered as a
service mark is not met by evidence which only
shows use of mark as name of a process and that
the company is in business of rendering services
generally, even though the advertising of the
services appears in the same brochure in which
Trademarks
Particular Goods, Services, or Other Subject
Matter
[6]
Trademarks
Alphabetical Listing
Pacol
[7]
Trademarks
Alphabetical Listing
Penex
Attorneys and Law Firms
*654 John T. Lanahan, Des Plaines, Ill., of record, for
appellant; Sidney W. Russell, Arlington, Va., of counsel.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
1
Application of Universal Oil Products Co., 476 F.2d 653 (1973)
177 U.S.P.Q. 456
S. Wm. Cochran, Washington, D. C., for the Commissioner
of Patents; John W. Dewhirst, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, RICH, BALDWIN and
LANE, Judges, and ALMOND, Senior Judge.
Opinion
RICH, Judge.
These consolidated appeals are from decisions of the Patent
Office Trademark Trial and Appeal Board affirming the
examiner's refusal to register two word marks for services.
We affirm.
No. 8906 1 involves the mark PACOL 2 sought to be
registered for “research, development, evaluation, market
and economic studies, consultation, design, engineering, and
technical services in connection with a process for the
dehydrogenation of normal paraffins” in Class 100 and for
“construction, installation. operation and servicing for others
of a process for the dehydrogenation of normal paraffins” in
class 103.
No. 8933 3 involves the mark PENEX 4 sought to be
registered for “research, development, evaluation, market
and economic studies, consultation, design engineering
and technical services for others in connection with an
isomerization process.”
The applicant, Universal Oil Products Company, is the same
in each case and the evidence it supplied to support the
applications is in large part identical. The same legal issues
are present in the two appeals. The board decision in PENEX
was rendered two months after the decision in PACOL and
largely relies thereon for support.
Refusal of registration for both marks was on the ground
that the specimens did not evidence use thereof to identify
the services named in the applications. The specimens filed
demonstrate that PACOL is used by appellant as the name
of a process for converting n-paraffins to corresponding nolefins by direct catalytic dehydrogenation and that PENEX
is used as the name of a process for the continuous catalytic
isomerization of normal pentane and hexane and mixtures
thereof. In each case one specimen is a 12-page brochure
entitled “UOP Processing Guide” which describes briefly
the PACOL and PENEX processes as well as eleven other
processes of “UOP.” Nowhere in this brochure, however,
is there a reference to PACOL or PENEX services. The
back page of the brochure is headed “WHAT'S YOUR
PROBLEM?” and contains a column of description under
the subheading “UOP's engineering, technical and marketing
services are available to help you find the answer.” There is
no question but that it shows appellant to be in the business of
rendering such services. Particularly relied *655 on are the
statement in the subheading, just quoted, and the statements
thereunder that
UOP is equipped to design and build any plant incorporating
any of its processes and to train refinery personnel for its
operation and maintenance. * * *
Additionally, UOP offers economic, marketing, and
management services to the petroleum industry-* * *.
The essence of the argument in these appeals is that appellant
would have us rule that the use of the marks sought to be
registered on processes which, presumably, it licenses others
to use, coupled with its rendition of services, constitutes use
of PACOL and PENEX as service marks under the law.
[1]
[2]
[3] Section 3 of the Lanham Act (15 U.S.C.
§ 1053) provides for the registration of “service marks.”
Section 45 (15 U.S.C. § 1127) defines “service mark” as “a
mark used in the sale or advertising of services to identify
the services of one person and distinguish them from the
services of others.” The Patent Office position is that, so far
as the records in these appeals show, 5 neither PACOL nor
PENEX has been so used. We see no error in that conclusion.
The requirement that a mark must be “used in the sale or
advertising of services” to be registered as a service mark is
clear and specific. We think it is not met by evidence which
only shows use of the mark as the name of a process and
that the company is in the business of rendering services
generally, even though the advertising of the services appears
in the same brochure in which the name of the process is used.
The minimum requirement is some direct association between
the offer of services and the mark sought to be registered
therefor. See Ex parte Phillips Petroleum Co., 100 USPQ 25
(Com'r. Pats.1953). There is no evidence of such association
before us. The advertising of the services is under no mark at
all and is in a brochure offering to license or install processes
bearing a dozen or more different names.
[4] Appellant would have us hold that “the association
of services with a name of a process” is sufficient to
warrant registration of that name as a service mark. The
argument starts from the premise that PACOL and PENEX
are process names rather than marks associated with services.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
2
Application of Universal Oil Products Co., 476 F.2d 653 (1973)
177 U.S.P.Q. 456
The proposition put to us is that the names of processes ought
to be registrable as “service marks” under the Lanham Act.
The tenuous reasoning in support of this proposition is based
on dictum in In re Radio Corporation of America, 205 F.2d
180, 40 CCPA 1025 (1953), where this court, in discussing
registration of the slogan “The Music You Want When You
Want It,” said:
We believe it equally true that Congress
intended a service mark to function
in such a fashion as to identify
and distinguish those things of an
intangible nature, such as services,
in contradistinction to the protection
already provided for the marks affixed to
those things of a tangible nature such as
goods and products.
From this statement appellant argues that service mark
registration was set up “not for services alone, but for
‘intangible things',” that a process is an intangible thing,
therefore, a mark or name used for a process should be
registrable as a service mark.
was under consideration and the next sentence of the
opinion is, “Clearly had Congress intended service marks
to apply to goods or products, we believe it would have so
stated.” (Emphasis ours.) The discussion was whether the
slogan was being used on a radio program or to promote the
sale of RCA Victor Red Seal Records. The court held it was
being used to promote the sale of records-tangible things-and
was therefore not registrable as a service mark and affirmed
the Patent Office.
[5] It is clear enough to us that a “process,” per se, is
not a “service.” A process can be carried out for oneself
or for others; it can be licensed to others to carry out for
themselves, which appears to be what UOP does. Carrying
out a process for others could be rendering a service as, for
example, operating a laundry. But that is not the kind of
thing UOP does. It helps others to carry out processes but
in so doing or in advertising its willingness to do so in the
specimens of record it has not associated PACOL or PENEX
with its services. Direct association is the minimum it must
show.
The decisions of the board in both appeals are affirmed.
Affirmed.
We reject this argument. Whatever the court in the Radio
Corporation opinion may have intended, we are sure it was
not that every mark used in connection with an intangible
is registrable as *656 a service mark. No such question
Parallel Citations
177 U.S.P.Q. 456
Footnotes
1
2
3
4
5
Opinion below reported at 167 USPQ 245.
Application serial No. 274,562, filed June 22, 1967.
Opinion below abstracted at 167 USPQ 576.
Application serial No. 302,157, filed July 5, 1968.
Appellant's brief states that in another application to register PENEX as a service mark a specimen therein includes the statement
“Penex and Platforming engineering, technical, and marketing services are available upon request,” and that the application was
approved. The Patent Office brief confirms that registration No. 940,145 was issued thereon on Aug. 1, 1972. The solicitor says this
merely “highlights the deficiency in the cases on appeal.”
End of Document
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
© 2013 Thomson Reuters. No claim to original U.S. Government Works.
3
~
203 USPQ
ld
lg
of
ta
purchaser would be likely to confuse
"M INON " with "MENNEN".
[2, 3] There is no dispute between the
parties as to differences between the marks
in meaning for "MINON" is an arbitrary
and coined term and "MENNEN" ,
although with "roots " as a surname ,
currently possesses no primary meaning
other than that as a trademark. The conflict
herein lies in a difference of opinion as to
whether "M INON " is confusingly similar
to "MENNEN" in appearance and/or
sound. In support of their respective viewpoints on this question, each party has introduced in evidence testimony by a
professor of linguistics and of English,
respectively, as an "expert witness " concerning likely pronunciations and visual
perceptions of the marks . As could be expected , each " expert witness" supported the
position of the party in whose behalf he
appeared . In a sense, each witness negated
or rebutted the effect of the testimony of the
other a nd thereby provided further credence
to the general principle that unlike the case
of well-known words in the dictionary, there
is no correct pronunciation of an arbitrary
term or even of a surname [See: Yamaha
Internat ional Corporation v. Stevenson, 196
USPQ 701 (TI&A Bd. , 1977), and cases
cited therein , affirmed by the Court of
Customs and Patent Appeals in an unpublished decision]; to the long-held view
that the opinions of witnesses, including
those qualified as expert witnesses, on the
question of likelihood of confusion are entitled to little if any weight and should not
be substituted for the opinion of the tribunal
charged with the responsibility for the ultimate opinion on the question' [See: Jones
& Laughlin Steel Corporation v. Jones
Engineering Co., 130 USPQ 99 (CCPA,
1961) ; The Quaker Oats Company v. St.
Joe Processing Company, Inc ., 109 USPQ
390 (CCPA, 1956); and Venetianaire Corporation of America v. A & P Import Co. ,
163 USPQ412(DCNY , 1969)]; a ndtothe
accepted fact that , absent a competently
designed and executed survey of a cross-section of customers and prospective customers
of the products or services involved in any
:d
1e
:r
''
>f
h
e
s
a
ll
)
)
j
Uqwa con Ci1rp. v. Brownzng-F'rrri.1· lnrlustrzrs, Inc.
' This is not to imply that the testimony of expert witnesses may never be of help to the trier of
fact in proceedings before the Board , for the basic
approach under Rule 704 of the Federa l Rules of
Evidence which are appli cable to thi s Board
J(See: Chicken Delight , Inc. v. Delight Wholesale
Co., 193 USPQ 175 (TT&A Bd ., 1976 )] is to encourage opinions by experts where they can be of
assistance to the trier of fact to understand
evidence or a fact. But, evidence of the type
offered here is of no probative value .
305
given proceeding to aid a trier of fact in
deciding a question of the type herein involved, the deciding tribunal must make its
own subjective evaluation of what the
average consumer will perceive the marks to
be as he encounters them in the actual or
hypothetical [where, as here, applicant is
not , as yet, marketing its goods in this country] marketing arena.
[4, 5] Considering the marks " MINON "
and " MENNEN" in such light and taki(lg
into account that average consumers are not
infallible in their recollection of the many
trademarks that they are exposed to through
the various communications media, much
less the spelling thereof, it is our opinion
that the marks are similar in appearance
and are reasonably susceptible of a similar
pronunciation and that therefore purchasers
would be likely to assume that app licant's
product , when offered , is another
"MENNEN " product.
Decision
The opposition is sustained , and registration to applicant is refused.
Patent and Trademark Office
Trademark Trial and Appeal Board
Liqwacon Corporation
v. Browning-Ferris Industries, Inc.
Decided May 31, 1979
TRADEMARKS
1. Evidence- In general (§67.331)
Pleading and practice in Patent Office
- In general (§67.671)
Evidence such as exhibits introduced under a pplicable rules of practice during trial
period is not ordinarily stricken, but will be
considered by Trademark Trial and Appeal
Board only if it is relevant and material for
purpose submitted.
2. Drawings (§67.30)
Pleading and practice in Patent Office
- In generaJ (§67.671)
Mark showA on dr~~i'ng is controlling,
not specimens filed with subject application.
3. Opposition ( §67.589)
Pleading and practice
It is incumbent upon opposer, as plaintiff,
to establish by clear and convincing
306
l .iqwacon Corp. v. Browning-Ferris Industries, lnr.
evidence that it was first to make "open and
notorious" use of mark in conjunction with
its services.
4. Acquisition of marks
(§67.071)
Acquisition of marks extent of use (§67.0731)
!,_'
ln. general
Character and
In general
Right of ow nership in and to mark arises
from prior use of mark in con nection with
particular product or service, and not from
prior adoption a lone; mark has no existence
apart from any product or service, and
hence mere adopt ion of word or symbol does
not , without more, confer right of ownership
upon its adop ter; in any controversy invo lving ownership . of particular mark or
priority, right to mark acc rues to first party
to use mark in trade, and not to first adopter
but subsequent user of the term in trade;
prior use of designation in con nection with
product or service in intrastate commerce is
sufficient to preclude registration by subsequent user of same or simi lar mark for like
or re lated goods if confusion is likely to occur, notwithstanding that subsequent user
may have been first to enter interstate trade
with its product or service so identified.
5. Acquisition of marks- Character and
extent of use In general
(§67.0731)
Registration- In general (§67.731)
Technical trademark or service mark us e
in commerce is requisite for federal registration , but prior use required to establish
rights in and to trade designation need only
be in intrastate co mmerce, and such use
need no t be in technical trademark or service mark sense; prior open and public us e
of term as salient feature of trade name in
co nnection with viab le business entity, or
use in advertising or promoting goods or services, may be sufficient for this purpose ;
Lanham Act Section 2(d) precludes
registration of mark that so resembles mark
registered in Patent and Trademark Office,
or mark ot trade name previously used in
U.S . a nd not aba ndoned, as to be likely to
cause confusion when applied to goods of
applicant.
6. Acquisition of marks- Character and
extent of use In general
(§67.0731)
Prior use of trade name may be sufficient
to give rise to superior rights in mark, but
mere act of incorporation, in itself, does not
es ta blish such priorit y of use; there must be
viab le corporation and, as in case of
trademark or service mark, "open and
203 US PQ
notorious " use of mark calculated to come.
to atte ntion of customers or prospective
customers for corpo ration 's present or
prospective offerings.
7. Acquisition of marks -Character and
extent of use In general
( §67.0731)
Evidence- Of use (§67.339)
Certificate from state attesting to change
of corporate name is insufficient to establish
open and notorious public use of new corporate name in absence of evidence of going
business at that time.
8. Acquisition of marks - Character and
extent of use In general
( §67.0731)
Evidence- Of use (§67.339)
Inter-office or internal correspo ndence
and memos , laboratory requests and reports
from a nd to sa le s personnel, communi cat ions to and from state governmental
agencies, letters, and the like, that are not
directed to customers or potential
customers, do not const itute open and
notorious use upon which rights in and to
mark can accrue.
9. Acquisition of marks- Character and
extent of use In general
(§67.0731)
Evidence -Of use (§67.339)
Oral testimony , in situations where
documentary evide nce may be insufficient
or unavailable, may be sufficient to establish
both prior and continuous use of designation , providing that testimony is by witness
personally conversant with fa cts, and that it
is clear , conv incing, consistent , and sufficiently circu mst a ntial to co nvince trier of
fact of its probative value.
10. Acquisition of marks - Character
and extent of use - In general
(§67.0731)
First adopter of mark who does not acquire or possess capacity to market goods or
services for which mark is intended must
g ive way to later adopter but prior user of
mark in con ne ction with marketable
product or service.
11. Opposition- Pleading and practice
( §67.589)
.
. Opposer has burden of establishing prior
n&ht s m mark by clear and convinci'ng
evidence, and any doubt must necessarily be
resolved aga inst opposer.
a
and
dlal
und
forr
jl
pos
ancJ
in I
In
em i;
10 01
12. Acquisition of marks - Character
and extent of use - In general
(§67.0731)
Marks and names subject to ownership
·-Service marks (67.525)
Designation may be used to identify both
process and services rendered under
process, and critical question is whether
mark was in use as service mark to identify
services as distinguished from process, per
se, at time subject application was filed .
Trademark oppositiOn No. 58,871, by
Liqwacon Corporation , against Browning-Ferris Industries, Inc., application,
Serial No. 65,442, filed Oct. 9, 1975. Opposition dismissed.
Howson & Howson, Philadelphia, Pa ., for
Liqwaco n Corporation .
Pravel , Wilson & Gambrell , Houston, Tex.,
for Browning-Ferris Industries, Inc.
Before Lefkowitz ,
Members.
307
Uq wacon Corp . v. B rowning-Ferris lndustrie.l', lnr.
203 USPQ
Fowler, and
Kera,
Lefkowitz, Member.
An application has been filed by Browning-Ferris Industries, Inc. to register the
notation " LIQWACON " as a service mark
for liquid waste processing and disposal services, namely, collecting industrial liqu id
wastes and converting the liquid wastes to
solid material for disposal. Use of the mark
by a wholl y-owned subsidiary company,
Browning-Ferris Industries Chemical Services, In c. since a t least as early as
November 1974 has been claimed.
Registration has been opposed by Liqwacon Corporation, which alleges use,
since prior to November 1974, of the notation " LIQWACON " as the significant
feature of its trade and corporate name as
well as a service mark in its business of liquid waste processing and disposal services,
the same services for which applicant seeks
registration ; and that
"By reason of the identity of the marks
and the nature of the services, customers
and prospective customers will assume
that th e service offered by Applicant
under its alleged service mark are performed by Opposer or under its sponsorship or license, and thereby damage Opposer through the likelihood of confusion,
~nd mistake ~nd deception of purchasers
m trade . . . .
In its answer, appli ca nt has denied the essential averments in the opposition relative
to opposer 's asserted act ivities under the
1
mark "LIQWACON" and, in particula r,
ha s specifica lly denied th a t opposer has acquired rights in the mark " LIQWACON "
which are superior to those possessed by
applicant therein. Absent superior right s,
applicant urges that opposer cannot be
damaged by the registration sought.
[1] The record consists of the pleadings,
applicant's a pplication file, answers by opposer to specific interrogatories propounded
by applicant, and trial testimony in beha lf of
each party. 1 Both parties have briefed the
issue joined by the pleadings' and ar- {
ticulated their respective viewpoints a t the
oral hearing conducted for the purpose .
[2, 3] The record shows, and it is not disputed by the parties, that they a re engaged
in rendering substantially identical services,
namely, collecting industrial liquid wastes
and converting the liquid wastes to solid
materials for disposal , and th a t these services are offered and sold under the substantially identical term "LIQWACON" [the
specimens filed with the subject application
show the mark as " LiqWaCon ', but the
mark shown on the drawing which is controlling herein is the typewritten word
" LIQWACON " signifying no claim as to a
specific form or styling. See: Rule 2. 51(d)] .
In view of the identity of services and marks,
there ca n be no question but that confusion
in the trade, to which such services are
directed , as to the source of the services or
mistake as to the actual services themselves
is reasonably likely to occur. Thus, the question here is which of the parties possess prior
or superior rights in the " LIQWACON "
desi .~nation . In this rega rd , since opposer is
1
Opposer has ob jected to the admission in
evidence a nd co nsiderat ion of a number of exhibit s offered by a pplica nt d uring the ta king of
the deposition of it s witnesses o n the basis that
they are not rel eva nt and do not support the
witnesses ' testi mony that a chemica l form a tion
process was carri ed out under the " Liqwacon "
name. Howeve r, evidence such as thi s introdu ced in evi dence under the app licab le rules
of practi ce during a tri a l period is not ordinarily stricke n. Hut , as in the case of a ll evidence
s ubmitt ed by a part y, it wi ll be considered by
the Hoa rd on ly if it is relevant and ma teria l for
the purpose submitted. Thus , these ex hibit s
will be detai led as a part of applicant's record
only insofar as they are relevant to the issue
before us.
2 Applicant , in its brief, has raised a question as to the timeliness of opposer 's opening
brief. Opposer 's brief was, ih fact ,• {I few days
late in being filed in this OITice. But, applicant 's
objection th ereto a t this time is'somewhat belated,
;md sin ce the Hoard is desirous of obtaining the
views of th e parties on th e issues before it ,
opposer 's brief has been cons idered herein .
308
l.iqwacon Corp. v. Browning-Ferris Industries, Inc.
the plaintiff, it has been incumbent upon it
to establish by clear >nnd ~o nvincing
evidence that it was the first to make an
"open and notorious " use of the mark
"LIQWACON" in conjunction with its services.
·
The following principles of trademark law
are believed applicable to a determination of
the outcome of this case depending, of
course, on an evaluation of the facts adduced by each party and the application or
appropriateness thereto of these principles.
[4, 5] A right of ownership in and to a
mark arises from prior use of the mark in
connection with a particular product or service and not from prior adoption alone. A
mark has no existence apart from any
product or service, and hence the mere
adoption of a word or symbol does not
without more confer upon the adopter
thereof the right of ownership. See: United
Drug Co. v. Theodore Rectanus, 248 U.S.
90 (1918). Thus, in any controversy involving the ownership of a particular mark
or priority therein, the right thereto accrues
to the party first to use · the mark in trade
and not to the first adopter but subsequent
user of the term in trade. And rights in and
to a trademark may arise out of intrastate
use an d are in no way dependent upon interstate use. See: McCauley v. Malt
Diastase Co. , 4 F.2d 944 (CA DC , 1925);
Joseph H . Meyer Bros. v. lnteratlantic
Trading Corp. , 89 USPQ 440 (Co mr.,
1951 ); and R .J. Moran Co. v. Gordon, 101
USPQ 206 (Comr. , 1954 ). That is, prior use
of a designation in connection with a
product or service in intrastate commerce is
sufficient to preclude the registration by a
subsequent user of the same or a similar
mark for like or related goods if co nfusion in
trade is likely to occur notwithstanding that
the subsequent user may have been the first
to enter interstate commerce with its
product or service so identified . See: Steer
Inn Systems, Inc. v. Laughner 's Drive-In,
In c., 16ll USPQ 626 (CCPA , 1969 ) .
Moreover, while technical trademark or service mark use in commerce is a requisite for
fed eral registration,' the prior use required
' Section 45 of the statute provides that a mark
shall be deemed to be used in commerce "(a) on
goods when it is placed in any manner on the
goods or their conta iners or the display associated
therewith or on the tags or labels affixed thereto
and the goods or are sold or transported in commerce and (b ) on services when it is used or displayed in the sale or a dvertising of services and
the services are rendered in more than one state or
in this and a foreign cou ntry and the person
rendering the services is engaged in commerce in
connection therewith."
203 USPQ
to establish rights in and to a trade designation need only be in intrastate commerce,
and such use need not be in a technical
trademark or service mark sense. A prior
open a nd public use of a term as a salient
feature of a trade name in connection with a
viable business entity or use in advertising
or promoting goods or services may be sufficient for this purpose. ' This " non-technical
use " or " use analogous to technical use " has
been defined as encompassing, inter alia,
use in advertising, use as a grade mark or as
a process, _per se, use as the distinguishing
feature of a name, and any other use of a
designation in a manner calculated to attract the attention of potential customers or
customers in the applicable field of trade
and to create thereby an association of the
term , an exclusive one, with the product or
service of a single, albeit anonymous,
source. See: John Wood Manufacturing Co.
v. Serve!, Inc., 25 USPQ 488 (CCPA, 1935 );
Lever Broth e rs Company v. Nobio
Products, Inc ., 41 USPQ 677 (CCPA
1939); Farrington Manufacturing Company
v. LeFebure Corporation , 120 USP(,! 93
(Co mr., 1959); Alfred Electronics v. Alford
Manufacturing Company, 142 USPQ 168
(CC PA, 1964); and The Jim Dandy Company v. Martha White Foods, Inc ., 173
USPQ 673 (CC PA, 1972). Thus, the tacking on of non-technical uses [trade name] to
technical trademark or service mark use-has
been permi_tted in determining the question
of ownershtp of marks and in determining
registrability thereof in situations involving
clatms of secondary meaning. See: In re
Texaco Inc ., 143 USPQ 364 (IT&A Bd .,
1964 ); Alfred Electronics v. Alford
Manufacturing Company, supra , Midwest
Homes, Inc. v. Midwest Houses, Inc., 120
USPQ 406 (Comr., 1959 ); Daltronics, Inc.
v. H. L. Dalis, Inc. , 158 USPQ 475 (IT&A
Bd. , 1968 ); Holiday Magic, Inc. v. Holiday,
Inc., 177 USPQ 572 (CC PA , 1973) ; and
DynametTech nology, Inc. v. Dynamet Inc .,
201 USPQ 129 (CC PA, 1979).
. In sum, rights in and to a trade designation anse from use and not mere adoption;
the use of a mark necessary to bestow a
proprietary right therein need not be a
technical trademark or service mark use, but
must be an "open and notorious " use
reaching purchasers or prospective
'.Section 2(d) of the statute precludes the
regtstratton of a mark which " so resembles a
mark registered in the Patent and Trademark'Office . or a mark or trade name previously used in the
Umted States and not abandoned, as to be likely,
when applted to the goods of the applicant , to
cause confusiOn or to cause mistake or to
deceive. " I Underlining addedj .
'
203 USPQ
l.iqwacon Ci1rp . v. Browning-Fari.r lndu.rtrif.r , Inc.
purchasers of the goods or services for which
the mark is employed; and the fact that a
party first conceived the mark and discussed
it and/or used it within an organization or
with persons outside of the organization,
other than potential customers, in anticipation of and in preparation for a subsequent
use in trade does not constitute an "open "
use and therefore is insufficient to establish
priority of use as of the time of these activities. See: Selfway, Inc. v. Travelers
Petroleum, Inc. , 198 USPQ 271 (CCPA,
1978); Computer Food Stores Inc. v. Corner
Store Franchises, Inc., 176 USPQ 535
(TT&A Bd., 1973) and cases cited therein.
Considering that the instant case involves
the rendering of services by the parties under the "LIQWACON " designation, the
following statement from Computer Food
Stores v. Corner Store Franchises, supra, is
further amplification of the nature and type
of use of a service mark.
"A service mark is defined in Section 45
of the statute as'* * *a mark used in the
sale or advertising of services to identify
the services of one person and distinguish
them from the services of others * * *. '
Thus, from the very nature of the definition, the type and character of the use of a
service mark extends beyond the narrow
concept of trademark use of a mark in the
accepted manner of affixation to the
goods and possibly beyond the concept of
a use of the term in a manner analogous
to trademark use, and encompasses a
broad spectrum of use including business
cards, stationery, circulars , direct mailing
pieces, advertisements in the various
media including radio and television commercials , store signs, and any other
method that may be employed in
promoting one's service. However, as in
the case of 'use analogous to trademark
use', in order to establish any rights in a
particular mark, such use must be an
open and notorious public use directed to
the segment of the purchasing public to
whom the services are intended , and must
be used in a manner sufficient to
demonstrate an intention to appropriate
the particular word or symbol as an indication of origin for a particular service
and to inform or apprise prospective
purchasers of the present or future
availability of the adopter 's service under
the mark . "
In a recent pronouncement concerning
the type of evidence necessary to establish
"public use " of a mark , the Court of
Customs and Patent Appeals in Old Swiss
House, Inc. v. Anheuser-Busch, Inc. , 196
USPQ 808 (CCPA, 1978) reversed the
309
Board 's holding that Anheuser-Busch was
the prior user and owner of the mark "THE
OLD SWISS HOUSE, for restaurant services based on the record therein with the
following statement pertinent herein:
"The evidence upon which the Board
based its decision is set forth at 193
USPQ 504-05. It consists of 12 articles,
each published only once , which
appeared in various newspapers and
trade journals between December 27,
1963 and April 11 , 1964, and a single
speech , on April 24, 1964, by one of
registrant ' s vice-presidents at a
shareholder's meeting. Registrant has
pointed to no additional evidence of any
significance upon which it may rely;
notwithstanding registrant's assertions to
the contrary, there is no evidence that the
aforementioned speech was printed and
distributed to stockholders , or that a sign,
which mentioned the name The Old
Swiss House was on the construction site
at Busch Gardens . The articles mentioned above were, in effect, press
releases ; in all but one, the mark, THE
OLD SWISS HOUSE, was buried in the
body of the articles . This, in our view, is
not the type of public exposure of a mark
that would be expected to have any
significant impact on the purchasing
public."
[6] Finally, while prior use of a trade
name may be sufficient to give ris<; to
superior rights in a mark , the mere act of incorporation, in itself, does not establish such
priority of use. There must be a viable corporation and, as in the case of a trademark
or service mark , "open and notorious" use
thereof calculated to come to the attention of
customers and prospective customers for the
corp or at ion's present or prospective
offerings. See : The Geo. Washington Mint,
Inc. v. The Washington Mint, Inc. , 176
USPQ 25 1 (DC NY, 1972) ; Bellanca Aircraft Corporation v. Bellanca Aircraft
Engineering, Inc., 190 USPQ 158 (TT&A
Bd. , 1976).
With these principles as background, it is
now appropriate to consider the record adduced by the parties herein.
Opposer ' s record consists of the
testimony of the president of opposer corporation and the founder of opposer's
predecessor company, currently a director
of opposer corporation, and a number of
documentary exhibits .
According to this record , Richard Welch
conceived the idea of developing a company
to engage in treating and aisposing of liquid
waste. Sometime in ' 19n, Liquid Waste
Conversion Company was organized for this
310
l.zqwacon Corp. v. Brow nlng-Ferrls lndustrles, Inc.
purpose under the auspices and direction of
Welch as president, who engagetl iry
organizing the corporation, •<;;onducting
marketing studies, financial planning, · and
other activities necessary to place the corporation on a viable footing. During the
summer of 1973, Yarway Corporation, a
capital equipment supplier with aspirations
to participate in· the industrial service
business, started negotiating with the Liquid Waste Conversion Corporation to acquire a majority interest therein. After
Welch's first contact with Yarway, an interim agreement was apparently entered
into between Yarway and the Liquid Waste
Conversion Corporation, during which time
the latter corporation, through Welch, conducted marketing evaluation and testing
studies relating to waste disposal with the
aim of evaluating his concept and developing plans for a waste · treatment plant. In
conjunction with these activities, Welch
collected waste samples for testing and
evaluation from Micro-Etch of New Haven,
Connecticut, Hubbard Hale of Waterbury,
Connecticut, and Superior Plating of Fairfield, Connecticut , in or about October 1973
as a cross-section of different types of wastes
to determine what wastes were available
and suitable for treatment by his concept or
process in the proposed plant to be erected
in Connecticut. The one to five gallon
samples of the wastes of these companies
were taken primarily to test the process being used to treat wastes and to wastes that
would not be susceptible for treatment. It
was a corporate policy not to accept wastes
that could not be successfully treated. There
is testimony by Welch on cross-examination
to the effect that , prior to picking up these
samples, he had "talked to these people
several times " and " promoted the Liqwacon 's concept and our method of treatment and handling ·waste. Then only after
they agreed, yes, we'd like you to treat our
waste iryou 're able to, after that I went back
and got the samples".
Since Liquid Waste Conversion Corporation did not posse);s a laboratory, Welch
transported the samples by car to Drexel
University in Philadelphia, Pennsylvania,
for the purpose of conducting the waste
treatment evaluation.
On or about this same time, the fall of
1973, "LIQWACON" was adopted as a
proposed corporate name and service mark
and, under the auspices of Yarway Corporation ,' a Patent and Trademark Office
search, a state registration search, and a
directory search were conducted. 5 In a letter,
' By this time, Yarway Corporation had apparently acquired an ownership interest in Liquid Waste Conversion Corporation.
203 USPQ
dated November 5, 1973, the mark
" LIQWACON" was cleared by counsel for
use and registration in connection with services and equipment for waste conversion
[opposer did not seek to obtain a federal or
state registration for "LIQWACON"].
Both of opposer's witnesses have testified
that the term "LIQWACON" was used informally for discussion purposes in reference
to the Liquid Waste Corporation within the
organization and in conversation with Drexel University personnel conducting the
evaluation studies. The report or evaluation
of the samples was reported to Yarway Corporation under the date of February 4, 197 4
and included a "Capital Equipment
Preliminary Cost Estimate" for Liqwacon
Corporation apparently covering the equipment needed to start the intended waste
processing or treatment plant. Welch
assertedly verbally reported back the results
of the waste treatment tests to the companies that supplied the samples because
plans were underway for the establishment
of a waste treatment plant, these companies
were interested in his organization as a
qualified and approved disposal service, he
was trying to establish customers prior to
the opening of the plant facility, and, in
general, "at the time I was visiting a number
of companies in Connecticut laying the
groundwork, so to speak for Liqwacon ".
On April 10, 1974, a letter was written to
Welch in care of Liqwacon Corporation by
an insurance agent dealing with the corporations 's insurance needs in connection
with the "initial installation tentatively set
for somewhere in Connecticut " . On April
30, 1974, the name of Liquid Waste Conversion Corporation was formally changed to
Liqwacon Corporation . Opposer thereafter
used the corporate name, Liqwacon Corporation, in correspondence and , in turn,
received correspondence directed to the corporate name relating to the organization 's
activities necessary to create a viable corporation and , in particular in this case, the
construction and start of a waste treatment
plant. This correspondence included letters
to and from consulting engineering firms ,
law firms , the Connecticut Development
Authority, the Connecticut Department of
Environmental Protection , sewer
authorities, and the like, and extended
throughout a greater part of 1974. On
August 23, 1974, the State of Connecticut
granted Liqwacon Corporation the right to
" transact business or conduct affairs " in the
state. Opposer also made of record a copy of
a bill from the Howard Johnson's Motor
Lodge in Hartford, Connecticut, dated
December 1, 1974 and directed to "Li-
Assoo -a
Thomas10 Q
necessa.n-
rructioo thc:RI
\\ilb \ .d
tides rdar and ro the~
facilities. Thes
published in
Bridgepon. 3..1
durin the peril
19- -. .-\ comp
p repared b .- op
m g the l11aC"k •
displayed them
of these anicl4
number- of rep
mailed or ba
CUSIOffierS in
and Rhode ls
mem ro ~
mem and d "spo
purchased 0\U"
nin in rhe rn
ed and insralkd
19 -i~
ISPQ
203 USPQ
nark
el for
1 ser·rsion
·al or
IN"] .
tified
1:1 in·ence
n the
)rexthe
Hi on
Cor1974
nent
aeon
qwacon " , covering the stay there of opposer's newly appointed plant manager.
jUip-
laSte
elch
suits
:oma use
nent
.mes
IS a
:, he
r to
, in
1ber
the
n to
by
cortion
set
pril
verI to
fter
1
~or­
trn ,
:arm's
:orthe
ent
:ers
ms ,
ent
of
1e r
ied
On
cut
to
the
r of
tor
ted
Li-
l .iqwacnn
G~rp .
v. Browning-Frrris lndustrirs, Inc.
As soon as opposer chose its plant site in
Thomaston, Connecticut , and received the
necessary permits to proceed with the construCtion thereof, press releases and interviews with Welch resulted in newspaper articles relating to the "LIQWACON " plant
and to the services to be rendered at these
facilities. These appeared in newspapers
published in Waterbury, Bristol , Hartford,
Bridgeport , and Danbury, Connecticut,
during the period from March 27 to July 20,
197 5. A composite drawing of the plant
prepared by opposer's engineers and showing the mark " LIQWACON " prominently
displayed thereon was depicted in a number
of these articles. According to Welch , a
number of reprints of these articles were
mailed or ha nded out to prospective
customers in Massachusetts, Connecticut
and Rhode Island. Chemical process equipment to be used in the plant for the treatment and disposal of waste was ordered and
purchased over a period of months beginning in the spring of 1975, and it was received and installed in or around the summer of
1975.
In September 1975, five thousand copies
of a brochure entitled "A Unique Disposal
System for Liquid Waste From Metal
Finishing " advertising the " LIQWACON "
service of Liqwacon Corporation were
printed and delivered to opposer. This
brochure was circulated during the period
between October 23, 197 5 and December
17, 1975, after the treatment plant had
opened. A truck, designed to be used in
picking up the waste at a customer 's plant,
was depicted in this brochure bearing the
mark "LIQWACON ", but this was merely
a mock-up of a truck that had been ordered
by opposer. The truck was actually acquired
approximately some time in October 1975 .
At this point, it is necessary toJause to note
that services of the type offere by opposer
under the mark " LIQWACON " were
directed to those companies th a t had need
for disposal of the liquid wastes resulting
from the metal finishing operations. The liquid wastes were picked up by opposer in
large tank trucks and transported to its
treatment plant where it was analyzed,
treated , and disposed of in accordance with
the applicable regulations. Opposer, its
operations, its plant , and its services identified by the mark " LIQWACON " were the
subject of an article that appeared in the
November 197 5 issue of " Finishers '
Management ".
On September 19, 1975, Liqwacon Corporation submitted a proposal for liquid
311
waste treatment and d-isposal to Peterson
Steels , Inc . of Windsor, Connecticut ,
described by Welch as its first customer,
and that company submitted its purchase
order directed to "LJQWACON " for the
treatment a nd disposal ser v ice on
September 23, 1975. Welch , on direct, indicated that the first load was picked up
before the plant was actua lly ready for
operation because of the desire to secure
orders in preparation for the opening and
because Peterson Steels overflowed their
reservoir tank thereby requiring removal to
one of opposer 's holding tanks for storage
until treatment could be made. Welch conceded on cross examination that, in pctuality, the first load of waste from Peter~on was
not picked up by opposer until October 23,
1975, and that the receipt of such waste was
still prior to the actual opening of the plant .
It is noted tha t the order from Peterson
Steels contained a reference to a " trial
period October 7, 1975 -January 1976"."
The " LIQWACON" waste treatment
a nd disposal services were performed for
manufacturers located outside of the State of
Connecticut in December 1975. Waste was
picked up from Revere Copper of New Bedford , Massachusetts on December 10, 17,
and 29, 1975 and from Polaroid Corporation
of Waltham, Massachusetts on December
18, 1975. These companies were invoiced for
these services by opposer on December 24,
a nd December 30, 1975. Opposer had
solicited liquid waste treatment business
from thes e c ompanies under the
" LIQWACON " designation prior to these
dates.
Opposer has used trucks bearing the
mark " LIQWACON " to pick up liquid
wastes and generally, metal finishing and
similar wastes , and performed the
" LJQWACON " treatment services at its
plant in Thomaston, Connecticut for
customers in the States of Maine, New
Hampshire, Rhode Island, M assachusetts,
New Jersey, and New York as well as in
Connecticut since October 1975.
In addition to the use of the corporate
na me and mark , "LIQWACON ", on the
trucks which have picked up waste and
treatment since some time in October 1975,
th e term " LIQWACON " has been
. prominentl y di splayed as a mark and/or as
th e salient feature of opposer 's corporate
6 Applicant has ma de of record a copy of an
ii nnouncement from opposer that it received on
November 7, 197_'i jbearing no d a te! to the
effect that " Our Liqwa"con fac ilit y will begin
processing inau stri(l l Wii stes in early November ".
312
l.iqwacon Corp. v. Browning-Ferris /ndu.rlrie.r , Inc.
203 USPQ
name on business cards, purchase orders,
governmental customers throughout the
invoices, sationery, treatment proposals and
United States and Canada".
.
price quotations, bills of lading, 'employApplicant, which is engaged in rendering
ment applications, buildings, treatment cost
services in addition to those referred to
appraisal forms , and personnel information
above as well as in selling certain products,
sheets. The April 1976 edition of "Wire
has some twenty-five operating stations
Journal" contained an article dealing with
across the United Stafes with activity in ten
opposer's operations with reference therein
states and with operating licenses to do
to " LIQWACON" both to identify opposer
business in some thirty-four states and Puerand its services. The present brochure used
to Rico and Canada. However, in the Spring
by opposer for advertising its
of 1972, applicant [for the remainder of this
"LIQW ACON" liquid waste treatment and
discussion this term will include both
disposal services was printed and disBrowning-Ferris Industries, Inc. and its
tributed in 1977. In response to insubsidary,
Browning-Ferris
Industries
terrogatories posed by applicant relating to
Chemical Services, Inc.] was essentially inits advertising expenses under the mark
volved in the solid waste collection and dis"LIQWACON " , opposer indicated that
posal business and was interested in expanding
there were no expenditures in this regard in
its operations in the solidification of liquid
1973; about twenty-five hundred dollars
wastes. Toward this end , applicant acquired
were spent for promotional purposes in
Cesco , Incorporated, which had some
1974, which were calculated to be ten perknow-how and experience in this and
cent of Welch's salary and expenses; about
related fields, and began to negotiate with
ten thousand dollars were directed thereto
Chemfix, Inc. in an effort to ac~uire said
in 1975, with six thousand dollars devoted to company and their "CHEMFIX ' process
the promotional brochure printed and disutilized to treat liquid wastes. As
tributed in and after September 197 5 and
negotiations progressed through 1973 into
four thousand derived from ten percent of early 1974, applicant began establishing
Welch's salary and expenses; approximately waste reception centers in Warren, Ohio,
eleven thousand dollars in 1976 involving
Houston, Texas , Pedricktown, New Jersey,
ninety-five hundred dollars for "direct exand Mobile, Alabama. These reception
penses" and fifteen hundred dollars from
centers typically were designed to contain
ten percent of Welch 's salary; and fifty-five two large lagoons that were either of five
hundred dollars through June 1977, with a hundred thousand-gallon or seven hundred
breakdown of twenty-five hundred dollars and fifty thousand-gallon capacity for
for "direct expenses" and three thousand receiving liquid wastes collected from
dollars computed from ten percent of applicant 's potential customers. After the
Welch 's expenses and salary.
lagoons were prepared , applicant began
collecting waste solicited from businesses
Applicant has offered the testimony of the
general manager of applicant corporation , through a marketing staff. In March 1974,
Browning-Ferris Industries, Incorporated , wastes were being received and chemically
who is also the president of applicant 's treated by Chemfix, Inc . for applicant at the
Houston center with the solid waste
wholly-owned subsidiary , Browning-Ferris
Industries Chemical Services, I ncorported, resulting from the chemical fixation of these
holding these positions since November , liquid wastes being shown to participants of
the National Solid Waste Management
1972 ; a Branch manager for Browmeeting that was held in Houston during
ning-Ferris Industries Chemical Services
employed by that company and its June 1974.
At least as early as May 1974, applicant
predecessor since August 2, 1971; and the
was actively pursuing the establishment of a
Project Mallager in Hazardous Waste
reception center at Pedricktown, New
Systems for opposer in Houston, Texas from
January I , 1977 to date and in another Jersey, including making application to the
New Jersey State Department of En. capacity from September 1973 through
September 1975; along with a large number vironmental Protection, Bureau of Solid
Waste Management, for the required perof exhibits.
mits. During the period when applicant was
Applicant, in its 1976 Annual Report disengaged in this licensing procedure, it was
tributed between November and December
permitted to collect wastes at this reception
1976 described itself as
center and , when required, Chemfix, Inc.
was called in to perform the solidification ·
" . . . the largest publicly held comprocess.
pany engaged primarily in providing solid
As · previously alluded to, in soliciting
and liquid waste collection ,
business during this period , applicant's
processing/recovery and disposal services
to commercial , industrial , residential , and
salesmen and personnel used the "CHEM-
iPQ
the
ring
I to
!CIS,
ions
ten
do
ler·ing
this
oth
its
ries
10-
lising
lid
:ed
me
nd
ith
tid
~ ss
<\s
ItO
ng
io,
y,
m
10
ve
:d
>r
m
1e
n
:s
~,
y
e
e
e
,f
t
203 USPQ
l .iqwacon Ci1rp. v. Browning-Ferris lndustriex, Inc.
FIX" mark, and the solidification process
performed on the wastes collected by applicant was accomplished by Chemfix, Inc. In
fact, the literature used by applicant's
salesmen was prepared by Chemfix , Inc. By
the middle of August 1974, difficulties arose
in the negotiations and applicant's
relationship with Chemfix , Inc ., and
meetings were held by applicant to discuss
the equipment needed to perform the service
itself. In September 1974, applicant 's
Manager of Engineering traveled to
applicant's Warren, Ohio facility to look at
a piece of equipment [a neutralizer unit]
that could be used in this process and subsequently made arrangements for having
that equipment brought to Houston, Texas .
On September 11 , 1974, a capital authorization of fifty thousand dollars was made to
bring together equipment necessary to perform chemical fixation at the Houston facility . In addition to the expenditure for bringing the existing neutralizer unit from
Warren, Ohio to Houston, the money was
used to purchase pumps, hoses, and the
other necessary · equipment , which was
assembled and made operational about the
last week in October 1974.
On October I, 197 4, applicant entered
into a license agreement with Chemfix, Inc.
whereby applicant was able to obtain use of
Chemfix ' s patent and engineering
technology relating to the treatment of liquid wastes for application on its own sites.
Under the agreement, applicant was
precluded from rendering these services on
the plant sites of customers or using the
mark "CHEMFIX " to identify such services . As a consequence, on October 24-25,
1974 at a Regional Vice-President 's meeting
in Lake Charles, Louisiana, the name
"LIQWACON" was chosen as the " Name
for Chemfix Process " . There is testimony by
applicant's witnesses that the participants
at this meeting, upon arrival back at their
stations, notified their sales and other personnel of the changes and that , at least as
early as November 1974, the
"LIQWACON " mark was employed in
soliciting accounts for the solidification of
waste services. In the interim, applicant's
in-house attorney was informed of the adoption of the new name on October 30, 1974
and advised to "apply for copyright or
trademark, whichever is proper " [the subject application, however, was not filed until
October 9, 1975 J. And in a letter, dated
December 3, 1974, the Line Managers of
applicant's Waste System and Chemical
Services Division were officially advised of
the change to "LIQWACON" as well as of
the license agreement and the need to
refrain from using the "CHEMFIX" mark.
313
Assertedly , applicant '1> sales personnel
began using the mark "LIQWACON" to
describe the services offered by applicant,
although admittedly employing " CHEMFIX" literature to describe the service until
the supply of this literature was exhausted.
Applicant, under the terms of the license,
performed its chemical fixation at the
Houston Reception Center utilizing the
make-shift neutralizer on or about October
25, 1974. This required a notification of site
selection to Chemfix, Inc. , within thirty
days after the first affixation, pursuant to (
the terms of the agreement. This notice was
given in a letter dated November 22, 1974.
At the time, the Houston Center had two
lagoons, each containing almost seventyfive-thousand gallons that required
chemical fixation as a result of applicant's
collecting liquid waste for several months
prior thereto. It was apparent that this fixation or the soliciting of the wastes were not
identified by the "LIQWACON " mark
since the mark was not selected until October 25 , 1974 and was not made known to
personnel until a time thereafter. However,
the liquid solidification or chemical fixation
activities were continued with this
neutralizer until through at least December
1974 or possibly January 1975 in Houston
on liquid wastes received during this time as
a result of salesmen 's contacting customers
for applicant 's chemical fixation and waste
disposal services, apparently under the
mark " LIQWACON " since applicant was
precluded from using " CHEMFIX" after
October I , 1974 on fixation services performed at its own sites .
In order for the liquid solidification portion of the "LIQWACON " or even the
" CHEMFIX " services to be performed,
there are two necessary ingredients in addi:
tion to the liquid waste to be disposed of,
namely, sodium silicate and Portland cement. As a consequence, during this first
chemical fixation process, applicant, in
November and December 1974, purchased
significant amounts of sodium silicate and
Portland cement from its suppliers on an
as-needed basis, because both were required
to be added simultaneously to the liquid
waste for solidification to take place .
During this same period, customers for
the waste disposal services were invoiced for
the services performed by applicant.
Although the invoices of record, dated during the period from late November 1974
through late January 1975; do . opt contain
any reference to the term "LIQW/\CON",
there is again testimony that these accounts
were solicited under the "LIQW ACON"
mark and services were rendered under the
314
l.zqwamn
Ci~rp.
v. Browning-Ferris Industries, Inc.
mark since these services were
"LIQWACON" services and applicant was
precluded from using "CHEMFIX" to
identify these services as it had previously
done.
Back in the Pedricktown , New Jersey
reception center, applicant solicited a
number of companies in the area for the
purpose of collecting their liquid wastes to
be chemically treated for disposal thereof
and was successful toward the end of 1974 in
receiving the liquid wastes of at least two
customers in the area. The documents submitted to reflect these transactions do not
evidence use of the "LIQWACON"
designation and, in this regard, there is only
the testimony of applicant's Liquid Waste
National Sales Manager that the mark
would have been used in contacting these
accounts. But, chemical solidification never
did take place in this center, and, in early
197 5, it was determined by applicant that
this New Jersey facility would not be a
viable center.
During this.- late 74 and early 1975
period, the witnesses indicated that
applicant's salesmen were out contracting
for and soliciting new business from potential customers who could use the liquid
waste and disposal services offered by applicant under the "LI~WACON" mark .
Customers for applicant s services, as in the
case of opposer, were those engaged in metal
finishing operations producing a liquid inorganic waste suitable for the implementation of the process owned and licensed by
Chemfix, Inc. In order to determine the
feasibility of utilizing applicant's
" LIQW /\CON " services, applicant's
salesmen made an initial evaluation as to
whether or not the waste stream would , in
fact, be chemically fixable , depending upon
whether it was an inorganic or organic
waste stream. Based upon this preliminary
evaluation, the salesmen would request a
gallon sample of the waste which was then
shipped to the laboratory in Houston to
determine the feasibility of its reacting to a
chemical treatment and , specifically, that of
applicant. l.n order to have a waste sample
·chemically .<a nalyzed, a Central Laboratory
Request Form was filled out to accompany
the sample to the laboratory. Of record are
request forms dated during the period from
December I 8 to 31 , 1974 and January 3,
I 97 5. These requests and the reports
thereon referred to the "LIQWACON"
treatment and the like . Once a customer's
waste stream had been determined to be of
such a nature that it was suitable for the
"LIQWACON" treatment and a price was
computed and presented to the prospective
customer in a proposal form, if the proposal
203 USPQ
was accepted , the liquid wastes would be
picked up by vacuum trucks at the
customer's plant site and transported to
applicant 's reception facilities for storage in
the lagoon or holding tanks until it could be
chemically fixed . Applicant's trucks vary in
capacity from fifty barrels to one hundred-thirty barrels, and applicant has approximately one hundred and sixty trucks
for this purpose. After the liquid waste is
collected, applicant assumes the responsibility for disposal in accordance with
prescribed environmental rules and
regulations.
As noted above, applicant's witnesses indicated that the salesmen , upon being informed of the new "LIQWACON" designation for applicant's services, began to use
the designation in solicitation of liquid waste
disposal business and, at times , they were
accompanied by the president of opposer's
chemical services subsidiary, who indicated
that he personally used the mark
" LIQWACON" to designate applicant's
service and also observed such use by the
salesmen.
In addition to the solicitation of business
by its salesmen, an official of applicant corporation, at a Hazardous Waste Seminar
held in Nashville, Tennessee, on April 2-4,
1975 , made an oral presentation to
representatives of industry and government
on "Hazardous Waste Management
Methods, Costs and Disposal Alternatives
Now Being. Offered by Browning-Ferris Industries Chemical Services, Inc.". In this
speech, reference was made to "This
Chemical Solidification Process is
Trademarked as LIQ-WA-CON n1 " .
This presentation was videotaped and the
text was bound in a book which was sent to
all of the participants. During the course of
the seminar, opposer's official had lunch
with potential customers and discussed the
"LIQWACON" services.
In March 1975, a second chemical fixa tion was run with the make-shift neutralizer
unit at the Houston facility. In May 1975,
the neutralizer was moved by flatbed truck
from Houston to a reception center in Kansas City, Missouri. Chemical processing of
liquid wastes previously collected and stored
with the make-shift neutralizer began at
Kansas City on or about May 15, 1975. This
required a notification of site selection to
Chemfix, Inc., according to the October 1,
I 974 agreement, and this was accomplished
in due time. By around june 7, 1975, both
lagoons at this facility were completely
processed. Thereafter, the neutralizer unit
was cleaned up and shipped back t.o
Warren, Ohio where it was again hooked up
for use.
203 USPQ
l.iqwacon Corp. v. Browning-Ferris Industries , Inc.
On July 22 , 197 5, the president of
applicant's chemical services division
delivered another speech, this time at a
"Dataquest Financial Analysts Presentation" entitled "Liquid Waste - A New
Market Opportunity "
wherein
"LIQWACON ' was used in the following
contexts:
"For instance, at BFI [applicant] , we
are using our licensed patented chemical
process trademarked ' LIQWACON 'TM
Which Converts Many Liquid Wastes
Into Dirt-Like Solids " .
and
"We look upon the LIQWACONTM
Process, From Our Experience as
Providing the Best Answer for Many
Inorganic Hazardous Liquid Wastes".
Bound copies of this speech or report were
thereafter distributed to those who attended
so that they could pass the information on to
their interested customers.
A mobile van to take the place of the
make-shift neutralizer was completed in or
around July 1975 after much effort and
planning, and it went into service in October 1975 for "converting industrial liquid
wastes into dirt-like solids suitable for landfill disposal", as set forth in the September
1975 issue of opposer's house organ, "The
Sales Scene". The picture in this publication shows the van with a large sign affixed
to the side thereof stating "LIQWACON
SERVICE ,
LIQUID
WASTES
CONVERTED TO SOLIDS ". This van,
with the sign prominently displayed, has
moved along the highways between various
locations, including the Houston and Kan sas City facilities when chemical fixation
was necessary.
Applicant, utilizing its "LIQWACON"
van , disposed of gallons of liquid waste for a
number of companies, during the months of
October and November 1975, and the
doc uments or invoices reflecting these activities all bore a reference to
" LIQWACON", per se, or the "LIQ-WACON TREATMENT " or the "LIQ-WACON PROCESS".
Finally, an official of applicant corporation , in a speech at the Chemical Show held
in Houston, Texas , in 1977, referred to the
mark "LIQWACON" in connection with
applicant 's waste collection and disposal
services.
Applicant 's record is devoid of any
evidence that it engaged, at any time, in any
media advertising or prepared and distributed promotional or descriptive
literature, other than reprints of speeches ,
315
directed to its "LIQWACON" services and
activities. The only reference to descriptive
literature of record is that pertaining to the
utilization of "CHEMFIX" literature until
the supply thereof was used up.
[7] Turning to . the issue of prior or
superior rights , the most apparent and striking impression of the record of each party is
the absence of documentary evidence of early "public use" of the mark "LIQWACON"
and the reliance on the statements of inhouse witnesses in support of the respective
claims of the parties. Neither party has called a customer or potential customer to corroborate such testimony. Opposer submitted some twenty-six exhibits in support
of its testimony. However, of these exhibits,
the large majority pertained , to correspondence with insurance companies,
consulting engineers, state authorities , attorneys, and others as necessary adjuncts to
the establishment of its business operations;
a motel bill which could hardly be deemed
to be a "public use " in connection with the
promotion of a business; the report of the
Drexel staff which was made directly to opposer and , again, preliminary to the establishment of a plant ; the stationery offered
by opposer to reflect current use; and the
newspaper articles that appeared in the
Connecticut papers during the period of
March 27 - July 20, 1975, which were not
advertisements placed on behalf of opposer,
but were merely publicity releases or
· write-ups reporting that a liquid waste conversion plant facility would be opening in
the future - something that did not occur
until sometime after October 1975 and
possibly between November and December
197 5. See: Old Swiss House , Inc. v.
Anheuser-Busch, Inc., supra. The exhibits
which may serve to demonstrate a "pub lic
use " of "LIQWACON" are few and far
between and comprise a brochure advertising "LIQWACON" services that was
printed in September 1975, but was not distributed until sometime between October
23, 1975 and December 17, 1975, after the
plant had opened [opposer employed a
mock-up of its intended tank trucks bearing
the mark for the purpose of this brochure]; a
c ur re nt . broch u re
a d v e r t i s i n g.
"LIQWACON" services distributed since
1977; an article about opposer and its services that appeared in the November 1975
issue of "Finishers' Management"; an article that appeared in "W!re Journal" in the
April 1976 issue ; a proposal " to Peterson
Steels , Inc ., asserfedly. opposer's first
customer, dated September 17, 1975, a
purchase order from Peterson Steels, dated
September 23, 1975, and a bill of lading
with a pick-up and delivery date of October
316
/.iqwacrm Ci1rp.
11.
Browning-Frrris lndustrieJ, Inc.
23, 1975, all bearing the "LIQWACON"
designation; and invoices to Revere Copper
and Polaroid Corporation, dated in
December 1975, all bearing ' the_
"LIQW ACON" mark and referring_ to
pick-up dates earlier in the month . Not to be
forgotten is the certificate from the State of
Pennsylvania att-:sting to opposer's change
of name from Liquid Waste Conversion
Corporation to Liqwacon Corporation on
April 30, 1974 which, in the abse~ce ?f
evidence of a going business at that t1me, IS
insufficient, per se, to establish an open and
notorious public use of the corporate name .
See: The Ceo. Washington Mint , Inc. v.
The Washington Mint, Inc., supra.
[8] Applicant's documentary exhibits are
likewise deficient in probative value as to
early prior public use of "LIQWACON".
The large majority of these exhibits comprise inter-office or internal correspondence
and memos, laboratory requests and reports
from and to sales personnel , communications to and from state governmental
agencies, letters to Chemfix Incorporated,
and the like, which are not directed to
customers or to potential customers of
applicant's services, and hence do not constitute an open and notorious use upon
which rights in and to a mark can accrue.
The exhibits that contain references to
"LIQWACON"includeacopyofaspeech
made by the president of applicant 's
chemical services subsidiary at a " Hazardous Waste Seminar " in Nashville ,
Tennessee on April 2 - 4, 1975, which was
said to be distributed to participants; a copy
of opposer 's " 1976 Annual. Report ". distributed to stockholders, wh1ch contams a
statement to the effect that "At some
locations, the materials can be treated by
LiqWaCon T\1. a proprietary process for
converting liquids to solids enabling final
disposal in conventional sanitary landfills ";
a copy of a speech by the same aforementioned official in July 22, 1975 on " Land
Wastes, A New Market Opportunit( '
before "Dataquest Financial Analysts ", m
which reference is made to applicant 's
" Licensed Pa en ted Chemical Process
Trademarked 'LIQWACONn1 ' "; a
photograph of applicant's "LIQWACON "
treating van, which did not go into operation until October 1975; a copy of
applicant 's house organ " The Sales Scene "
of September 197 5 which ref~rs to th~ ne.w
"LIQWACON" van to go mto serv1ce m
October ; and copies of invoices to Phillips
Petroleum dated in October and November
1975 containing a reference to the
"LIQ-WA-CON TREATMENT ".
It is not to be inferred from the above
comments that these documents do not play
203 USPQ
a role in determining the issue at hand , but
it is clear that their probity depends upon
the testimony of the respective witnesses and
that the result will be determined primarily
on said testimony considered in the environment of the times and situations that they
relate to.
[9) It is settled that oral testimony in
situations such as this one where documentary evidence may be insufficient or unavailable for various reasons may be surficient to establish both prior and continuous use of a designation providing that
the testimony is by a witness or witnesses
personally conversant with the facts , and
that it is clear, convincing, consistent, and
sufficiently circumstantial to convince the
trier of fact of the probative value thereof.
See: The B. R . Baker Company v. Lebow
Brothers, 66 USPQ 232 (CCPA, 1945) ~nd
cases cited therein; Elder Manufactunng
Company v. International Shoe Company,
92 USPQ 330 (CCPA, 1952) ; Walter Kidde
& Company, Inc. v. Alcon Laboratories ,
Inc. , 162 USPQ 412 (TT&A Bd ., 1969) ;
Nettie Rosenstein, Inc. v. Princess Pat , Ltd.,
105 USPQ 226 (CCPA, 1955), Volunteer
Portland Cement Company v. General
Portland Cement Company, 135 USPQ 87
(TT&A Bd ., 1962); and Thompson
Medical Company, Inc. v. Alberto-Culver
Company, 156 USPQ 133 (TT&A Bd .,
196 7).
There seems to be little doubt but that opposer 's two witnesses and applicant's three
witnesses were all conversant with the activities of their respective companies in
respect to their adoption and use of the
" LIQWACON" mark ; that their testimony
involved personal knowledge of activities for
which they were responsible; and that
generally their testimony was of a probative
nature. However, the "circumstantial"
aspect of this testimony is the critical factor
in evaluating the testimony. In this regard,
the term "circumstantial" must be considered in the context of "circumstantial
evidence ", which is defined in Black's Law
Dictionary, Third Edition (1933) as
"Evidence directed to the attending circumstances, evidence which inferentially
proves the principal fact by establishing a
condition of surrounding and limiting circumstances, whose existence is a premise
from which the existence of the principal
fact may be concluded by necessary laws
of reasoning".
[10) This concept is necessary because,
although ownership in and to a mark extends to the one who first made "open " use
thereof to the relevant class of purchasers or .
prospective purchasers and that a sale oft
203
good or en ·
u e ufficien o
of a mark. her
time of uch trade for
whether it be
service .
:
~l anufacturi
5, 19 S) and l
there aro e the
trade no trad
cumstance . tiM
acquire or pos
the good or e
intended mu
but prior u er
m a rket able pro
Drug Co. ,._
This i m t
although opJ>OI
term " LIQW.
its trade name
mark in imel'll
neces ary to e
solidif indu
mi11edl oppor
son teel . Inc
the company 1
so that ''e ca1
' as
fami
" LIQ\\' co:
time; that o
collect wa tes
until October
Peter on tee
til October '
chemicalh· u
203 USPQ
e
·r
tl
n
:r
)-
:e
.n
te
IY
Jr
at
ve
I"
or
d,
n-
al
W
ry
a
e
al
S
,
­
e
r.
fi
Liqwamn Ci~rp.
11 .
Browning-Ferris lndustrirs, lnr.
317
goods or services is not the sine qua non of a
utili ze the name "LIQWACON" in lieu of
use sufficient to amount to an appropriation
"C HEMFIX " in soliciting customers and
of a mark, there nevertheless must be, at the
that by November 1974, "LIQWACON"
time of such use, the ability to engage in the
was so used; that in a letter , dated ,
trade for which the mark is intended
December 3, 1974, all field officers were ofwhether it be the sale of goods or the sale of ficially informed of the name change and adservices. See : Blue Bell , Inc. v. Farah
vised not to use "CHEMFIX "; that appliManufacturing Company, 185 USPQ I (CA
cant, using a make-shift neutralizer, began
5, 1975) and the cases cited therein . Thus,
its first chemical fixation of wastes in its
there arose the often-stated remark that " no
Houston facility on October 25, 1974 and,
trade no trademark ". Under these circonsidering that the "LIQWACON" was
cumstances, the first adopter who does not
not chosen until that time, it is apparent
acquire or possess the capacity to market
that the wastes so solidified were solicited
the goods or services for which the mark is
under the "C HEMFIX " name ; that ~his
intended must give way to a later adopter chemical fixation continued into Decerrlber
but prior user thereof in connection with a
1974 on wastes subsequently collected and
marketable product or service. See: United solicited under the " LIQWACON"
Drug Co. v. Theodore Rectanus, supra.
designation in view of the prohibition of the
This is most significant herein because, October I, 1974 agreement with Chemfix,
although opposer was the first to adopt the
Incorporated ; that another chemical fixaterm "LIQW ACON" and use it as a part of tion took place in Houston in March 1975
its trade name and, at times, as a service on wastes solicited under the
mark in internal and external preparations " LIQWACON " mark , attested to by the
necessa ry to establish a plant necessary to witnesses who called on prospective clients
solidify industrial wastes chemically, adwith the salesmen; that a speech was made
mittedly opposer 's first customer was Peter- by one of opposer 's officials during a
son Steels, Inc .; that proposals to and from
meeting held April 2 to 4, 1975 in which the
the company took place in September 197 5 mark " LIQWACON " was employed; that
so that we can assume that Peterson Steels chemical processing of liquid wastes
was
familiar
with
opposer's collected under the mark " LIQWACON "
"LIQWACON" services at or prior to that
with the make-shift neutralizer was undertime; that opposer's trucks designed to ta ken at applicant's Kansas City facilit y on
collect wastes were not placed into business or about May 12, 1975; that applicant's
until October 1975; that the wastes from the mobile " LIQWACON " treatment van was
Peterson Steels mills were not picked up un- placed in service in October 1975 ; and that
til October 23, 1975; and that these were not the van was utilized in the treatment of
chemically treated until the plant facilities wastes at times thereafter .
were operational some time thereafter. So,
[11] Considering the foregoing
opposer was in no position to render the chronology of events, it is difficult not to be
collection services until October 1975 when persuaded by the testimony of applicant's
the trucks were ready [there is nothing to witnesses that , as a result of the October 1,
suggest that other types of trucks were
1974 agreement, applicant had to cease usutilized J and to render the chemical ing the mark "CHEMFIX " and that shortly
solidification services until the plant opened thereafter it adopted and began to use the
in November or December 1975. And the mark "LIQWACON" in connection with a
September 1975 brochure promoting op- waste collection and disposal service which
poser's "LIQWACON" services was not it had previously rendered under the
distributed until after October 1975.
"CHEMFIX " mark. Applicant had the
Insofar as applicant is concerned, the facilities in Houston, Texas, for this purpose
testimony is clear, consistent, and uncon- a t the time and the testimony, giving
tradicted that prior to October 1, 1974, credence to the exhibits , is both circumstanapplicant was rendering a waste collection tial and persuasive of use of
and disposal service under the "CHEM - " LIQWACON " in connection with a going
FIX " mark with the chemical fixation ser- operation before opposer even secured the
vices being rendered for applicant by Chem- necessary plant facilities . to render its
fix , Incorporated; that beginning October 1, " LIQWACON " service in the latter part of
197 4, applicant was able to render the 1975. If there could be any doubt on this
chemical fixation process of Chemfix, Incor- matter, it must be remembered that opporated at its own installations and under a poser, as the plaintiff, had the burden of esname other than "CHEMFIX"; that the tablishing prior rights i11 LIQWACON " by
name " LIQWACON" was chosen at a clear a nd convincing evidence and that any
meeting held on October 24-25 , 1974 ; that doubt must necessarily be resolved against
the attendees reported back to their staffs to opposer.
318
203 USPQ
Wrston Instruments , lnr. v. Systmn-Donner Corp.
Opposer has raised many questions as to
applicant's right to register " LIQWACON"
on the subject app lication. Without -going
into detail therein save for th~ question as to
what does " LIQWACON", as used by
applicant, serve to identify, suffice to say the
claimed date of first use of November 1974 is
within the " ball park " insofar as
"LIQWACON" was first used in the sa le or
advertising of the services and the chemical
solidification services performed at Houston
shortly after the adoption of the mark; and
that the collection services , which obviously
would be performed before the chemical
solidification service, is so intimately tied to
and bargained for with the solidification service that any time interval therebetween is of
no moment in a situation such as this.
[12] As to the argument of opposer,
namely, that applicant has used
"LIQWACON" to identify a process, per
se, rather than any services identified
thereby, there is no question but that a
number of applicant 's exhibits contain
reference to "LIQWACON PROCESS ",
"LIQ-WA- CONNED "; "Disposal via
LIQ-WA-CON Process ", and like expressions. But, it is recognized that a
designation may be used to identify both a
process and services rendered under the
process and that the critical question is
whether the mark was in use as a service
mark to identify services as distinguished
from a process, per se, at the time of the filing of the subject application. See: In re
Produits Chimiques Ugine Kuhlmann
Societe Anonyme, 190 USPQ 305 (IT&A
Bd., 1976) and cases cited therein. Here, the
subject application was filed on October 9,
1975, and the specimens filed with the
app lication are photographs of the mobile
fixation van which bears the notation
"LIQWACON SERVICE LIQUID
WASTES CONVERTED TO SOLIDS " .
The record shows that this van went into
service in October 1975. This constitutes
service mark use, but considering that the
testimony and invoices relating to the collection and tre~ tment of wastes at or about that
time suggest that they occurred after the
critical October 9 , 19 75 date , the
Trademark Attorney should require applicant to establish that the van was in use by
applicant in connection with the claimed
services on or prior to October 9, 1975. See:
Rule 2.131.
Decision
The opposition is dismissed , and the
application file is remanded to the
Trademark Attorney for further action as
indicated in the foregoing opinion.
District Court, N. D. California
Weston Instruments, Inc.
v. Systron-Donner Corporation
No. C-74-1099
Decided Aug. 16, 1978
UNFAIR COMPETITION
1. Pleading and practice in courts Trial (§53.80)
Antitrust laws ( §68.15)
Question of conspiracy in restraint of
trade by accumulation and enforcement of
dominant patents in field is common question that predominates over all other
questions in case and satisfies first prerequisite of Fed.R.Civ.P. 23(b)(3); that
measure of damages resulting from alleged
conspiracy may vary among class members
does not mean that class action would be inappropriate.
PATENTS
2. Patent grant ( §50.15)
Intent of patent laws
There is no statute in patent area comparable to federal antifraud statute, 15
U.S.C. 78j(b).
Action by Weston Instruments, Inc.,
agai nst Systron-Donner Corporation, for
patent infringement , in which defendant
counterclaims against Weston Instruments,
Inc. , and Schlumberger, Ltd. , for antitrust
violations, bad faith enforcement of patent,
and common law fraud. On defendant's motion to maintain counterclaims as class action. Motion granted in part.
Lars I. Kulleseid, Albert E. Fey, and Fish &
Neave, all of New York, N.Y., and
Fredric C. Nelson, Joseph A. Darrell, and
Thelen, Marrin, Johnson & Bridges, all
of San Francisco, Calif. , for Weston
Instruments, Inc. , and Schlumberger,
Ltd.
Harold C. Hohbach, Jerry G. Wright,
Donald N. Macintosh , a nd Flehr,
Hohbach, Test , Albritton & Herbert , all
of San Francisco, Calif., for SystronDonner Corporation.
Peckham, District Judge.
Plaintiff Weston filed suit against defendant Systron-Donner on May 23, 1974,
alleging infringement of three patents held
by the plaintiff: Gilbert Patent No .
3,051 ,939; Amman Patent No. 3,316,547;
and Nagy Patent No. 3,713, 136. Systron-
203
c
PQ
Donner fil
plaint iff
chlumbe
now on d
fi rst three
tion.
T he fi
violation
15 . .C .
Act, IS C.
a lleged! ~
ta blish a
voltmeters
method o
analog to
spiracy im
nant patell
enfor ce
counte r-d~
tion to res
second co
forcem em
statement
counter-d!
tion the
countercla
that the ,
campaign
disclos e~~
the Am m
Systron
consisting
jected to 1
force men
alleged ly
the optior
under th«
patent in
elude bot
licenses •
face th e r
asserts th
member
through '
of the ins
the acti o1
tion is
23(b )(3).
The Requ
[1] Rt
questiom
questio r
members
be supe1
judicatin
ficientl y.
antitru sl
restraint
and enfo
field . W
the qu es
questi on